US Patent Attorney
EIP is an award-winning, dynamic and forward-thinking IP practice with around 170 people across seven offices in the UK, Germany, Sweden and the US. We were one of the first firms to offer combined patent attorneys with patent litigators.
EIP has a reputation for delivering holistic IP services to companies throughout the world. The business has an impressive list of direct clients which includes household name tech companies, leading electronic and software companies as well as global manufacturing, life science, food tech and engineering companies.
The business is organized into several tech areas to reflect the expertise of the attorneys and lawyers at EIP. These include EIP Dynamics, EIP Elements, EIP Life, EIP Healthtech, and EIP Energy, as well as our class-leading electronics practice, EIP Digital. We also have an award-winning Litigation team, which has won the “Managing IP UK Firm of the Year” four times in a row, from 2018 to 2021.
Diversity is an intrinsic part of EIP’s business culture. We are proud to support the IP Inclusive initiative and we are a signatory to the IP Inclusive Charter. EIP actively engages in diversity efforts and is committed to developing an attitude of openness for the benefit of all those working in the IP profession.
EIP firm has a friendly, progressive, and mutually supportive working environment.
About the role
EIP’s fast-growing Denver office is seeking to add a new 2 to 6 PQE Patent Attorney to its talented team. We would like to hear from candidates who have previous engineering or computer science experience. Artificial intelligence experience is also desired but not required.
Patent Attorneys help inventors and manufacturers to protect their intellectual property rights. They assist inventors and manufacturers with the process of obtaining a patent, combining specialist technical and legal knowledge. Patent Attorneys draft and prosecute patent applications, including developing technical arguments to support the application in official examination proceedings with national and regional patent offices. They may also become involved in renewing, defending, and enforcing patent rights.
The type and level of work patent attorneys become involved in will depend on their particular skill set, and the clients that they work with. They work directly with some clients, but also provide support to more senior fee earners, including Partners. They may work closely with foreign associate firms and are required to conduct appropriate business development activity to support EIP’s future growth plans.
The primary duties and responsibilities for this role are listed below.
- Discussing inventions and processes with inventors and manufacturers, to ascertain whether the inventions and processes are likely to succeed in being granted a patent
- Analysing scientific and technical documents, including previously published patent documents and non-patent literature, to assess whether an invention is new and innovative
- Analysing and advising on the results of patentability searches
- Drafting and filing detailed descriptions of inventions, using precise legal terms
- Suggesting modifications and/or extensions to the definition of an invention, where appropriate
- Applying for patents from the US Patent & Trademark Office (USPTO)
- Reviewing external search reports issued by the USPTO, or other patent offices
- Preparing and filing responses to reports from patent examiners
- Advising clients on appropriate amendments to patent documents following reports from the USPTO
- Advising clients on whether business activities will infringe someone else’s patent rights
- Assisting with the assignment of a patent, when it is sold or transferred
- Analysing infringements, and the validity of granted patents
- Providing advice on other intellectual property rights – such as designs or trademarks – where qualified to do so
- Dealing with client requests and queries in a helpful and timely manner
- Building good working relationships with clients, foreign attorneys, colleagues, and others
- Working with the Records Department, to ensure that application and renewal deadlines are met
- Providing patent related opinions including pre-litigation counselling, as appropriate
- Advising EIP Europe and other foreign attorneys, in relation to foreign patent applications
- Keeping up to date with legal developments within the intellectual property sector
- Travelling to client meetings, and to other external meetings, as and when required
- Completing all necessary background reading prior to attending meetings
- Attending patent office hearings and/or other proceedings on behalf of clients, as and when required
- Conducting business development activity – including seeking additional work from existing clients, and bringing new clients to EIP – through building own personal profile, networking, and research
- Assisting with the preparation and checking of client bills
- Ensuring all relevant documents and emails are filed on the Document Management System
- Keeping own docket up to date and ensuring actions are completed in a timely manner
Skills, Experience & Qualifications
Successful candidates will be able to demonstrate the following:
- A B.S. degree in electrical engineering, computer engineering or computer science. A postgraduate level qualification or doctorate in electrical engineering, computer engineering or computer science would also be desirable
- Law degree from an ABA qualified US law school
- Passage of a US state bar exam and currently in good standing
- Passage of USPTO patent registration exam
- An appropriate professional attitude (personable, well prepared, flexible and enthusiastic)
- Excellent understanding of scientific and technological principles and processes including software, machine learning and AI technology
- Excellent written and oral communication skills
- Ability to express complex ideas clearly and concisely, and the ability to structure a precise and coherent argument
- At least two years experience preparing and prosecuting US patents in software (and preferably in AI), preferably at a law firm; in-house experience will be considered
- Ability to work on their own (although colleagues are available to provide advice and support), but also the ability to deal with a variety of people at all levels
- Ability to balance knowledge of intellectual property law against commercial requirements
- Ability to work under pressure, which may be the result of competing and inflexible deadlines when working for more than one client at the same time
- Excellent research and presentation skills
- Self-motivation, and the ability to manage own workload
- Meticulous attention to detail, and an analytical mind
- Initiative and the ability to act independently
As required by the Colorado Equal Pay Act, EIP is providing a reasonable estimate of a possible compensation range for this position: $135,000 to $165,000, based on experience. Actual compensation will be influenced by various factors, including but not limited to the level of relevant experience, skill sets, training, licensure and certifications, internal equity and market data. This range is based on a full-time work schedule.
A discretionary bonus may be available based on performance.
EIP’s benefits offering includes the following:
- Subsidised health and dental insurance coverage, through our group health plan;
- Optional disability and life insurance, with ability to increase levels of coverage;
- A 401k plan with employer contributions;
- Discretionary bonuses;
- Flexible at home/in office working opportunity; and
- Meal and rest breaks, in accordance with Colorado law and our internal policy.
If you have any questions or would like to be considered for this vacancy, please email our Head of Talent Acquisition at email@example.com.