Job Profile  
 
Technical Graduates
 
  Patent Engineers, Agents  
 
  • Review invention disclosures from inventors
  • Conduct patentability searches
  • Analyze, Draft and file patent applications
  • Conduct correspondence with the local Patent and Trademark Office (PTO)
  • Counsel clients on Local and foreign patent strategy
 
  Patent Examiners  
 
  • Works at PTO
  • Assess applications for patents by ascertaining that the invention is new, not merely an adjustment to something which already exists, carrying out searches and making sure application meets all requirements of Patent Office
  • Making a final decision as to the novelty of the invention, which is written in a final report
  • The Patents are granted, re-examined, reissued by Patent Examiners
  • Occasionally, becoming involved in specialized work, such as intellectual property policy, information retrieval and publicity
 
 
Patent & IP Expert / Advisor / Consultant
 
 
  • Domain Experts
  • Assist attorney and agents
  • Making a final decision as to the novelty of the invention, which is written in a final report
  • Coordinate patent application filings in local and foreign countries
  • Engaged in high end jobs, such as Patent Valuation, Patent Licensing
 
 
Patent Prosecutors - Entry level
 
 
  • Preparing Information Disclosure Statements, Oath and Declarations, other basic filing papers (Legal support/paralegal functions)
  • Freedom to operate/product clearance (document review)
  • Patentability study (document review)
  • Legal and technical research
  • Response to restriction requirements and first Office Actions
 
 
Patent Prosecutors - Intermediate level
 
 
  • Patentability search and review and preparation of new patent applications (U.S. and PCT filings) Freedom to operate/product clearance (search and participate in opinion writing)
  • Validity and invalidity opinions (document review/basic support)
  • Conduct personal or telephone interviews with PTO Examiners
  • Response to final rejections
  • Coordinating prosecution with foreign associates
 
 
Patent Prosecutors - Expert level
 
 
  • Write Appeal Briefs; conduct Oral Hearing at Board of Patent Appeals and Interferences (BPAI)Validity and invalidity opinions (document review/basic support)
  • Validity and invalidity opinions (participate in writing)
  • File ex parte or inter partes re-examination
  • File re-issue application
  • Participate in litigation (U.S. and foreign)
  • Extensive direct contact with clients; begin developing own clients
 
     
 
Legal Graduates
 
  Working at End User Organization  
 
  • Patent drafting and prosecution
  • Patent infringement and validity opinions
  • Licensing agreements
  • Employment contracts
  • Advise on trade secrets, patent strategy, business plans
  • Interact with foreign patent counsel, litigation counsel, venture capitalists, auditors
 
  Working at a Law Firm or as independent IP Attorney  
 
  • Discovery
  • Memoranda
  • Requests
  • Motions
  • Depositions
  • Trial and appellate briefs
  • Settlement negotiations
  • Mediation
  • Arbitration
 
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