Permanent - Full Time
Business - Intellectual Property
The Technical Specialist will assist attorneys with all aspects of drafting and prosecuting U.S. and International patent applications.
Scope of Responsibility
The Technical Specialist position at Withers Bergman is responsible for preparing trademark, patent, and copyright applications, assisting with intellectual property litigation, and conducting related intellectual property research and due diligence.
- Responsible for the drafting, revising, and filing of patent documents
- Prepare U.S. Provisional, U.S. Non-provisional, and PCT applications and associated documents, including transmittals, Application Data Sheets, drawings, Information Disclosure Statements, and sequence listings
- Complete formality documents for national filing requirements including Powers of Attorney, assignments, and inventor declarations
- Complete legalization of documents, as required: order priority documents and assignments from the U.S. Patent and Trademark Office; obtain foreign priority documents
- Advise patent litigation teams based on technical and scientific areas of expertise
- Assist corporate and intellectual property attorneys with IP due diligence
Specific Skills Required
- Must possess strong technical skills and have a good working knowledge of Microsoft Word, Excel, Outlook, PowerPoint, and programs like FileSite/iManage and Elite
- Solid command of the English language including excellent spelling, grammar, punctuation, form and style
- Strong communication and interpersonal skills
- Experience drafting and prosecuting biotechnology patent applications
- Familiarity with legal terminology pertinent to the areas of assignment
- Ability to prioritize and multitask effectively
- Ability to work as part of a team, as well as independently
- Must have basic knowledge of USPTO rules and procedures
- A minimum of two years of experience as a Technical Specialist is required
- A U.S. Patent and Trademark Office registration number is preferred, although not required
- A Ph.D. in biology, biochemistry, biomedical engineering, biotechnology, cell biology, developmental biology, immunology, or pharmacology is required.
Withersworldwide has been acting for successful individuals, families and institutions for over 100 years.
We advise clients on the full range of their business, personal and philanthropic legal needs, both at home and abroad. With offices in the key financial centres of Europe, Asia-Pacific, the United States and the Caribbean, we provide coverage and services that other law firms focussed on the needs of the individual cannot. We have represented 46% of the Top 100 in The Sunday Times Rich List, 25% of the US Top 100 Forbes Rich List, 30% of the Top 20 Hong Kong billionaires in the Forbes World's Billionaires list and over 20% of the Forbes Asia's Richest Families list.
Equal Opportunities Employment Statement
The firm is an Equal Employment Opportunity employer. Equal employment opportunity has been and will continue to be a fundamental principle at the firm. Employment at the firm is based upon personal capabilities and qualifications without regard to race, color, religious creed, sex, gender, gender identity, gender expression, pregnancy, age, marital status, sexual orientation, national origin, ancestry, alienage or citizenship status, medical condition, genetic information, political activity or affiliation, or any other classification or characteristic protected by applicable federal, state or local laws. The firm prohibits and will not tolerate any discrimination or harassment on the basis of any of these classifications or characteristics.
Furthermore, the firm will not discriminate against any applicant or employee on the basis of a physical or mental disability or status as a disabled veteran or veteran of the Vietnam era. The firm will make a reasonable accommodation for employees with a qualifying disability unless providing such accommodation would impose an undue hardship.
The firm is committed to complying with all applicable provisions of the Americans with Disabilities Act (“ADA”) and state and local disability laws, as applicable. It is the policy of the firm not to discriminate against any qualified employee or applicant with respect to any terms or conditions of employment because of such individual’s disability or perceived disability. Such terms or conditions of employment include application procedures, hiring, advancement, discharge, compensation, training, or other privileges of employment. The firm will make a reasonable accommodation for employees or applicants with a qualifying disability unless providing such accommodation would impose undue hardship.