Patent IP Attorney
foley hoagNew York, NY
About the role
Patent IP Attorney We are seeking an experienced Patent IP Attorney to manage and advance a high-value patent portfolio across US and international jurisdictions. The role is responsible for drafting and prosecuting patent applications, conducting freedom-to-operate and patentability analyses, managing oppositions and appeals, advising on licensing, transactions, and M&A, supporting IP litigation and expert witness activities, and coordinating cross-border prosecution and regulatory interplay. The ideal candidate combines strong technical background, excellent claim drafting and analytical skills, hands-on experience with patent search and docketing tools, and proven USPTO and EPO practice experience.
Key Responsibilities:
- Draft, edit and prosecute patent applications and claims for software, electrical/mechanical, biotech/pharma, chemistry and related technologies, including PCT and national phase filings
- Prepare and file PCT, US and foreign patent applications; manage prosecution strategy and correspondence with foreign associates
- Conduct prior art searches, patentability analyses, freedom-to-operate (FTO) studies, invalidity/validity opinions, and infringement analyses
- Prepare persuasive responses to office actions, appeals, oppositions (including EPO oppositions), and reexamination proceedings
- Manage and advise on patent portfolio strategy, prosecution budgets, annuity and fee management, patent term adjustment and maintenance
- Support licensing, technology transfer, IP due diligence for M&A, and commercialization activities including drafting and negotiating IP-related agreements (NDAs, licenses, assignment agreements)
- Provide IP litigation support, coordinate with outside counsel, assist with claim construction, expert witness retention and preparation
Qualifications:
- Juris Doctor (JD) or equivalent law degree and technical degree (e.g., MS, PhD, or engineering degree) in relevant discipline (electrical, mechanical, computer science, biotechnology, chemistry)
- Registration to practice before the USPTO; admission to a state bar required; European Patent Attorney qualification or EPO practice experience preferred
- Strong litigation support experience including infringement analysis, claim construction, expert witness coordination and managing outside counsel
- Excellent written and oral communication skills, strong attention to detail, project and docket management skills, and ability to work with cross-functional teams
- Familiarity with standards/SEP issues, software and computer-implemented inventions, biotechnology/pharmaceutical drafting, chemistry patents, and regulatory considerations (e.g., FDA) preferred
- Ability to travel as needed and to coordinate international prosecution and litigation activities
- BenefitsVacation/PTOMedicalDentalVision 401kBonusRelocationTelecommute$200,000.00 - $360,000.00 Annually
Matching similar jobs
JOB OVERVIEW
Experience level
Senior
Location
New York, NY
Occupation
Lawyers
Industry
All Other Legal Services
Posted
7 days ago
Tired of running searches?
Rank the roles you'd take once, and matches like these arrive on their own.
CREATE PROFILE (opens in a new tab)