The Scientific Advisor is responsible for providing technical knowledge & expertise to the Intellectual Property Practice Group. Support the prep & prosecution of patent applications by analyzing tech & scientific material including prior art literature/other tech data. Support pre-litigation patent analysis, due diligence, freedom to operate analysis & proceedings in front of the Patent Trial & Appeals Board. Utilize understanding of US Code Title 35, Code of Federal Regulations Title 37, and Manual of Patent Examining Procedure. Interview inventors & work with clients on gathering info for preparing patent applications. Conduct or direct patentability searches. Participate in IP asset reviews & analyze office actions. Prepare and complete patent claims & specs. Review & edit non-substantive filings (e.g., Response to Missing Parts, RCE) to ensure accuracy, consistency & compliance w/regulatory & legal requirements using existing models, templates, and prior work product. Prepare responses to Office Actions & claim amendments. Assist in preparing opinions of counsel, including freedom to operate analysis. Assist in preparing status reports for client patent portfolios & prepare for examiner interviews. Review comments from clients/other counsel & communicate them to supervising attorney, for incorporation in final document. Consider long/short-term outcomes and determine when to escalate specific situations to attorneys. Supports senior team members with negotiation and execute discrete tasks as directed. PhD in Biomedical Engineering required, plus 4.5 years’ experience as Scientific Advisor, Technical Specialist, and/or Technical Advisor. Experience must include 3.5 years’ experience with USPTO practice and procedures.
Position can work from home in commuting distance from employer’s address at 500 North Capitol Street NW, Washington, DC 2001-1531. McDermott Will & Schulte employees qualify for our incentive program if they refer a candidate for this position. Please contact Amanda Ryan at Apryan@mwe.com.
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