About the Intellectual Property - Patent Prosecution Section

Our patent prosecution team takes our client’s strongest innovations and efficiently crafts patents to obtain protections in mission-critical jurisdictions. We have a deep bench of associates, patent agents, and technical advisors to draft applications, respond to office actions, and conduct examiner interviews. We help clients identify innovations, develop prosecution strategy, and ensure quality control — providing critical guidance to help clients succeed.

Responsibilities

Technical Advisor with an advanced degree in chemistry or relevant laboratory experience to join the IP Prosecution team in any of Mintz’s offices. Technical Advisors work under the supervision and guidance of partners in our Intellectual Property section and perform a variety of patent-related activities, primarily in the areas of patent prosecution, freedom to operate analysis, and due diligence work. Specific duties include the following:

• Assess scientific literature, patents, and patent application documents, each encompassing a variety of chemical subjects, including organic, synthetic, and medicinal chemistry.
• Understand, critique, and provide insightful opinion on scientific data relating to inventions. Conduct a comprehensive search for scientific articles, patents, and patent application documents relevant to the subject of an invention. Perform in-depth analysis comparing an invention with existing discoveries or inventions. Identify essential elements, features, or components of an invention.
• Compose patent applications comprising a comprehensive background of the field of an invention, a description of critical features and components of the invention, and a set of claims clearly and distinctly defining the invention.
• Draft responses to rejections of a patent application for an invention from the United States Patent and Trademark Office and other worldwide Patent Offices, providing detailed analysis of the scientific or patent references cited in the rejections, assessing the difference between the invention and the citations, and presenting convincing arguments and reasoning why the patent application is to be allowed as a patent.
• Collaborate with colleagues on various projects. Adapt effectively in different team environments. Present ideas, reasoning, and conclusions in a concise way to colleagues. Provide insightful feedback and arguments to colleagues on their ideas.
•  Work with clients on innovative and cutting-edge technologies to procure patent protection and build IP portfolios.

Collaboration with team members is an important component of any role at Mintz. Therefore, the firm encourages working from the office approximately 60% of the time in accordance with the firm's published guidelines.

Qualifications:

• M.S. or Ph.D. degree in Chemistry (will also accept candidates who have defended dissertation and are waiting for degree to be conferred) or relevant laboratory experience.
• Demonstrated knowledge in the following scientific fields: organic chemistry, synthetic chemistry, medicinal chemistry, and pharmaceutical sciences.
• Demonstrated skills verbally presenting scientific concepts, terms, and discoveries to wide audiences, including scientists and non-scientists.
• Demonstrated scientific writing ability using proper grammar and vocabulary that also includes the following skills: analyzing and explaining abstract scientific concepts and terms synthesizing a large amount of scientific or technological literature into a systematic and concise description of the state of the art; and differentiating and describing important differences among related scientific discoveries or technological breakthroughs.

• Able to balance and prioritize multiple competing priorities and responsibilities, be highly organized and exercise extreme attention to detail.
• Able to collaborate and work effectively in team settings.
• Absent an exemption required by law, each Mintz employee is required to be fully vaccinated against COVID-19, including having received a booster dose if eligible for it.

About Mintz

Mintz is an Am Law 100 law firm with over 500 attorneys serving clients worldwide. Our attorneys combine legal, business and industry insight to help navigate shifting challenges. We advise business leaders, entrepreneurs, and investors on pivotal deals, disputes, and regulatory matters within our core practice areas. We are strategically located to meet the needs of our clients, with offices in Boston, Los Angeles, New York, San Diego, San Francisco, Washington, DC, and London.