Scientific Advisor or Patent Agent

Crowell & Moring
Jun 01, 2023
Jun 13, 2023
Trademark Agent
Contract Type
Company Description

Job Description

Crowell & Moring LLP is an international law firm with offices in the United States, Europe, MENA, and Asia that represents clients in litigation and arbitration, regulatory and policy, and transactional and corporate matters. The firm is internationally recognized for its representation of Fortune 500 companies in high–stakes litigation and government–facing matters, as well as its ongoing commitment to pro bono service and diversity, equity, and inclusion.

Job Summary

Crowell & Moring LLP, a global Am Law 100 law firm, seeks a highly qualified Scientific Advisor or Patent Agent to join its IP practice group, working from its Chicago, IL office.

Scientific Advisors and Patent Agents are integral members of the firm's IP Practice who work on technical assignments that vary in length, and aid in the preparation of opinion matters as well as the prosecution of patent applications with the United States Patent and Trademark Office ("USPTO") and foreign patent offices. Scientific Advisors and Patent Agents work on various aspects of the patent application process as well as validity and infringement analyses. They work directly with attorneys in the firm, and are expected to communicate effectively and efficiently with attorneys, clients, and patent examiners.

A registration number before the U.S. Patent and Trademark Office is not required for the Scientific Advisor position, although a candidate who intends to take the registration exam to become a Patent Agent is preferred.

Job Responsibilities
  • Performs technical research and analysis on behalf of infringement and validity analyses.
  • Prepares and files (if Patent Agent) official correspondence with the USPTO, including initial application filings, responses to Office Actions and Information Disclosure Statements, and coordinating foreign prosecution through local counsel.
  • Drafts patent applications with clarity and technical accuracy.
  • Helps attorneys prepare patentability analyses and opinions.
  • Communicates with attorneys, office staff, clients, inventors, and USPTO patent examiners to aid in the prosecution of an application, including providing counsel within the role of a USPTO Bar–admitted Patent Agent.
  • Assists with technical issues in IP due diligence and litigation.
  • Maintains a docket of statutory USPTO and client due dates and satisfies all due dates in accordance with client instructions and firm docketing procedures.
  • Provides technical analysis and assistance in patent litigation and Patent Trial and Appeal Board (PTAB) proceedings.
  • Engages in ex parte appeals and oral arguments before the PTAB.

  • A technical degree in basic or applied sciences or engineering is required.
  • A Master's degree or PhD in applicable subject matter is preferred.
  • Scientific Advisors seeking Patent Agent employment must possess a technical degree and sufficient accompanying credits to qualify them to take the USPTO Patent Bar Exam subject to the "General Requirements Bulletin for Admission to the Examination for Registration to Practice in Patent Cases before the United States Patent and Trademark Office."
  • No legal or law firm experience required, but candidates must satisfy education requirements and must be willing and able to learn quickly.
  • Patent Agent candidates must have a valid patent practitioner registration number and be in good standing with the USPTO.
Knowledge, Skills and Abilities
  • Independently motivated to succeed and measure success on a team level.
  • Demonstrated ability to communicate persuasively, both orally and in writing. Must possess a thorough command of the English language, including excellent spelling, grammar, and punctuation.
  • Ability to provide quality client service to both internal and external contacts. Requires patience, creativity, and discretion.
  • Demonstrated ability to organize and prioritize work in a dynamic and complex environment to meet deadlines and client and attorney needs.
  • Demonstrated ability to work effectively with others in a cooperative manner to accomplish position requirements.
  • Desire to assist in litigation and post–grant proceedings.

Additional Information

Qualified candidates only. EOE m/f/d/v