CONTRACT PATENT ATTORNEY / PATENT AGENT (Chicago Metro)
Lucas Group’s corporate client is seeking an experienced Patent Prosecution Attorney or Patent Agent for a temporary role in the greater Chicago area supporting a very busy in-house legal team. This temporary assignment is expected to go through October.
Responsibilities:
- Draft and file new patent applications, including US, PCT, and foreign patent applications
- Prosecute patent applications worldwide, including drafting and filing replies to Office Actions in the US, preparing instructions to foreign associates, completing patent formalities (filing paperwork, assignments, declarations, information disclosure statements, etc.), docketing and monitoring deadlines, and managing case files
- Perform patent searches (e.g., patentability, landscape, freedom-to-operate, and company searches) and analyze search results
- Review data disclosure and publications requests from the business
- Work closely with the company’s science and engineering teams to identify, develop, and protect inventions
- Assist with the drafting and interpretation of the IP provisions in a wide range of agreements
- Respond to requests from customers (both internal and external), collaborators, and investors
- Champion best practices for confidentiality, trade secrets, and other IP-related matters
- Develop and maintain IP-related systems and infrastructure
- Support other members of the legal team
Requirements:
- Bachelors’ degree or higher in biotechnology, chemistry, engineering, or a similar field
- Strong academics
- Relevant experience and/or education in industrial biotechnology, i.e., the engineering and use of microorganisms for industrial applications
- 3-10 years of experience performing patent prosecution and opinion work
- Registration with the USPTO as a patent agent or attorney
- Illinois barred if an attorney
- Familiarity with foreign patent prosecution, particularly in jurisdictions such as China, Europe, India, Japan, and South Africa
- Strong verbal and written communication and interpersonal skills
- Authored at least two Office Actions that can be shared as part of interview process (one of which would ideally be bioscience)
WHY WORK FOR LUCAS GROUP?
Lucas Group is a leading national executive recruitment firm, ranked #3 on Forbes’ list of Best Professional Recruiting Firms in 2018. We offer varied types of opportunities (law firm and in-house), competitive hourly wages, benefits, earned PTO, weekly payroll, and more.
