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Top 42 Patent Agent Skills

Below we've compiled a list of the most important skills for a Patent Agent. We ranked the top skills based on the percentage of Patent Agent resumes they appeared on. For example, 29.7% of Patent Agent resumes contained Patent Applications as a skill. Let's find out what skills a Patent Agent actually needs in order to be successful in the workplace.

These Are The Most Important Skills For A Patent Agent

1. Patent Applications
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high Demand
Here's how Patent Applications is used in Patent Agent jobs:
  • Draft and prosecute foreign and domestic patent applications; special emphasis on diagnostic and therapeutic agents for cancer and cardiovascular applications.
  • Suggested and wrote detailed experimental protocols to aid inventors in enhancing their patent applications.
  • Prepared and prosecuted patent applications for individuals, corporations and patent attorneys.
  • Identified, drafted and prosecuted patent applications in software/hardware.
  • Reviewed/edited patent applications originally drafted by other attorneys.
  • Drafted and prosecuted patent applications.
  • Collaborate with associates in disparately located offices to prepare and file patent applications in accordance with the client's requirements.
  • Prepared draft patent applications in communications, circuit design, and display technology.
  • Helped prepare, file, and prosecute utility patent applications.
  • Prepared and prosecuted patent applications before the U.S. Patent Office.
  • Prepared and prosecuted both U.S. and foreign patent applications.
  • Manage US patent applications of foreign origin.
  • Prepared and prosecuted Indian patent applications for proprietary inventions before the Indian Patent Office as registered Indian Patent Agent
  • Drafted, prosecuted and provided technical assistance for biochemical and biopharmaceutical patent applications.
  • Patent & Marketing Agency Developed ideas creating patent applications earning trademarks, copyrights and 16 patents for clients
  • PATENT AGENT Analyzed patent applications and cited references to formulate legal and technical arguments.
  • Filed over 30 provisional patent applications (e.g.
  • Drafted computer software and automotive patent applications Applied for and obtained registered trademarks Argued motions in civil court and administrative hearings
  • Drafted and prosecuted chemical and biotech patent applications, conducted freedom-to-operate, infringement, patentability and validity analyses.
  • Drafted and prosecuted chemical and biotech patent applications Drafted patent case law review briefs for legal team.

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117 Patent Applications Jobs

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2. Intellectual Property
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Here's how Intellectual Property is used in Patent Agent jobs:
  • Implemented and managed current awareness program to monitor intellectual property of Suppliers, Competitors, and Customers to ensure competitive advantage.
  • Represented technology inventors before Motorola's Networks and Enterprise patent committee and executed intellectual property training class for 50+ engineers.
  • Performed intellectual property due diligence for the divestiture of a division to a large corporation represented by aggressive outside counsel.
  • Build strong client relationship management practice through tailored consulting in Intellectual Property matters, especially in patents.
  • Develop customized patent and intellectual property strategies according to individual business demands and product launch plans.
  • Patent Attorney consultant Consulted overseas companies on protection of their intellectual property in China.
  • Researched intellectual property issues concerning non-practicing entities to keep the firm up-to-date.
  • Provided intellectual property training to about 30 technical and business colleagues.
  • Directed Research initiatives to provide intellectual property protection.
  • Managed and operated multiple intellectual property companies simultaneously.
  • Maintained daily communication with the intellectual property office.
  • Managed all Intellectual Property matters.
  • Managed, trained over 25 engineers, physicists, chemists, and engineering students in intellectual property.
  • Provided litigation support for cases dealing with various aspects of intellectual property law.
  • Evaluated intellectual property (IP) rights to support litigation.
  • Keep up-to-date with legal developments in the intellectual property field.
  • Assist supervising attorney in all aspects of Intellectual Property law.
  • Draft and negotiate software and intellectual property licenses.
  • Provide opinions regarding patent infringement and participate in strategic planning related to intellectual property.
  • Monitored intellectual property activities of third parties in patent pending subject matter areas.

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62 Intellectual Property Jobs

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3. Medical Devices
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Here's how Medical Devices is used in Patent Agent jobs:
  • Prepared and filed provisional patent applications, utility patent applications, and design applications with a concentration in medical devices.
  • Prosecuted patent applications in the fields of diesel particulate filters, polymer synthesis, medical devices and mechanical engineering.
  • Prepared patent applications directed to medical implants and medical devices.
  • Prosecuted patent applications for two medical devices.
  • Drafted applications in the field of database systems, semiconductor devices, and medical devices (dental align devices).
  • Prepared and prosecuted medical devices patent applications, specifically for heart valves, and for heart-valve based medical devices.
  • Focused on catheters, implantable medical devices and drug delivery systems.

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4. Invention Disclosures
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Here's how Invention Disclosures is used in Patent Agent jobs:
  • Worked with engineers and managers to help convert over 15 invention disclosures into patent applications
  • Evaluate invention disclosures from inventors to determine patent ability of their invention.
  • Interview inventors to obtain full invention disclosures for drafting patent applications.
  • Conducted inventor brainstorming sessions to generate invention disclosures.
  • Reviewed invention disclosures and prior art.
  • Reviewed invention disclosures, assessed patentability, drafted and prosecuted patent applications in the chemical, biotechnological, and pharmaceutical sciences.
  • Prepare written invention disclosures -Describe maximum claim scope with disclosure assuring broadest possible claim coverage.

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13 Invention Disclosures Jobs

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5. PTO
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Here's how PTO is used in Patent Agent jobs:
  • Conduct telephone interviews with USPTO Examiners during patent prosecution.
  • Completed patent and trademark searches to advise the client on the likelihood of rejection from the USPTO.
  • Draft and prosecute patent applications before the U.S. Patent and Trademark Office (USPTO).
  • Created, assisted clients in executing, and recorded assignments with the PTO.
  • Prepared, filed and prosecuted utility and design patent applications before the USPTO.
  • Completed or assisted with the filing of ~30 responses to USPTO Office Actions.
  • Drafted amendments and replies in response to several hundred PTO office actions.
  • Acted as a liaison among US PTO, legal and scientific teams.
  • Conducted interviews with USPTO Examiners and Supervisors to further client objectives.
  • Draft USPTO Petitions and Office Action Responses including amendments & remarks.
  • Manage patent prosecution documents and dockets using USPTO EFS website.
  • Drafted and prosecuted responses to the USPTO Office Actions.
  • Performed prior art searches at the USPTO search facility.
  • Conduct interviews with examiners at the USPTO.
  • Conducted interviews with PTO examiners.
  • Responded to USPTO office actions.
  • Completed or assisted with miscellaneous other USPTO filings including one appeal brief and one ex parte reexamination request.
  • Perform overflow work for boutique patent law firms including drafting patent applications & USPTO Office Action responses.
  • Evaluated pre- and post-issue patent adjustment eligibility for pending matters before the PTO and the FDA.
  • Conducted U.S. trademark clearance searches and drafted trademark applications and office action responses to the USPTO.

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6. Art Searches
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Here's how Art Searches is used in Patent Agent jobs:
  • Performed art searches, assembled documents and wrote specifications
  • Conducted state-of-the-art searches (patents and scientific and product literature).
  • Completed prior art searches and drafted responses to the U.S.P.T.O.
  • Performed prior art searches and produced written opinions of findings.
  • Conducted prior art searches for patentability, validity, and freedom-to-operate analysis.
  • Conducted extensive prior art searches for prosecution and litigation related matters.
  • Assisted in patent prosecution doing technology reviews, freedom to operate searches, patentability, and prior art searches.
  • Peer review patent applications drafted by other firm professionals Conduct Prior Art searches when requested by client
  • Performed prior art searches, provided verbal and written patentability opinions.
  • Conduct state-of-the art searches and prior art searches for patentability.
  • Prepared and prosecuted U.S. and international patent applications, conducted prior art searches, and drafted patentability opinion letters.
  • Conducted prior art searches Drafted provisional applications Drafted responses to office actions
  • Performed prior art searches to determine patentability of applications.
  • Perform prior art searches and provide patentability opinions for electrical, electronic, and mechanical inventions, and business method inventions.
  • Performed prior art searches using subscription-based tools including Innography; prepared four-corners(boundaries of invention) for reconveyance purposes.
  • Performed prior art searches relating to patentability using patent research tools such as Delphion and Thomson Innovation.

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7 Art Searches Jobs

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7. Due Diligence
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Here's how Due Diligence is used in Patent Agent jobs:
  • Conducted Patent Review and Analysis for Freedom to Operate, Product Clearance, Validity, Due Diligence and Licensing.
  • Perform due diligence of patent portfolios as well as necessary research for patent-related license agreements and opinion letters.
  • Designed and implemented due diligence strategies for mergers, acquisitions, and IPO activities.
  • Conducted Freedom to Operate, Product Clearance, & Due Diligence Analysis.
  • Performed due diligence and clearance searches for various products.
  • Participated in due diligence review of patent portfolios.
  • Patent portfolio valuation and due diligence and search for patent infringers.
  • Developed patent portfolio and conducted due diligence for early stage startup company that was acquired by leading Intravascular Ultrasound Corporation.

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15 Due Diligence Jobs

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8. PCT
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Here's how PCT is used in Patent Agent jobs:
  • Performed PCT International Searches and Preliminary Examinations.
  • Drafted over 70 patent applications and prosecuted with USPTO; drafted and nationalized 5 international(PCT) applications.
  • Provided analysis and prepared responses and claim amendments to numerous Office Actions in US, PCT and foreign jurisdictions.
  • Prepared Patent Cooperation Treaty (PCT) applications, analyzed search reports, and prepared responses to Written Opinions.
  • Prepared and prosecuted patent applications at the US-PTO, PCT, EPO, and in foreign jurisdictions.
  • Drafted patent applications for provisional filing, national filing, and PCT filing.
  • Drafted and prosecuted US, PCT and foreign patent applications.
  • Handled PCT patent filings and managed foreign patent filings.
  • Translated and proofread PCT and its Regulations.
  • Maintained and prosecuted domestic and foreign applications, office actions, information disclosures (IDS), and PCT applications.

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3 PCT Jobs

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9. Biotechnology
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high Demand
Here's how Biotechnology is used in Patent Agent jobs:
  • Prepared and prosecuted U.S. and international patent applications in the pharmaceuticals, biotechnology, chemicals, materials and mechanical arts.
  • Prepared and prosecuted US and International applications related to biotechnology, immunology, mechanical devices and pharmaceutical subject matter.
  • Worked on drafting and prosecution of biotechnology, pharmaceutical, medical device and chemical patent applications
  • Prepared and prosecuted U.S. and foreign patent applications for pharmaceutical and biotechnology clients.
  • Prepared and prosecuted biotechnology related patent applications for universities.
  • File and prosecute U.S. and foreign patent applications in the biotechnology, pharmaceutical, and chemical areas.
  • Prepared and prosecuted biotechnology related patent applications; metro-Boston office closed in 2009 due to the recession.
  • Prepared office action responses for biotechnology, drug delivery and medical device clients.
  • Conducted patentability, invalidity and infringement searches for pharmaceutical and biotechnology clients.

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13 Biotechnology Jobs

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11. Trademark Applications
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Here's how Trademark Applications is used in Patent Agent jobs:
  • Prepared trademark applications/renewals and office action responses.
  • Filed several dozen trademark applications with the Patent and Trademark Offices of Moldova and Russia - all of them were certified.
  • Complete prosecution of trademark applications at state, federal, and international levels.
  • Drafted and prosecuted a wide range of patent and trademark applications.
  • Conducted trademark searches and provided support in the evaluation of trademark search results and the filing and prosecution of trademark applications.

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3 Trademark Applications Jobs

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12. Information Disclosure Statements
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Here's how Information Disclosure Statements is used in Patent Agent jobs:
  • Prepare information disclosure statements, declarations, and other patent prosecution related materials.
  • Reviewed and filed Information Disclosure Statements with patent office.
  • Created and filed information disclosure statements.
  • Filed patent applications, Information Disclosure Statements, PCT applications, and amendments with the United States Patent and Trademark Office.
  • Prepared, drafted and maintained domestic applications, office actions, and information disclosure statements.
  • Prepared and filed Information Disclosure Statements for the USPTO.
  • Prepared Information Disclosure Statements, patent searches and preliminary patentability opinions.

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1 Information Disclosure Statements Jobs

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13. Law Firm
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Here's how Law Firm is used in Patent Agent jobs:
  • Worked with over 15 external IP Law firms and outsourced drafting, review and prosecution work on need- basis.
  • Provide a full range of patent agent services to solo inventors, tech firms, & IP law firms.
  • Maintained close contact with Korean Patent Law firms, delivering US Patent application service from Korea.
  • Patent agent at a Chicago law firm.
  • Secured new clients for the firm (Law Firm of Shu M. Lee; Norris McLaughlin & Marcus, PA).
  • Number 1 law firm in US patents issued Patent preparation and prosecution Patent searching

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47 Law Firm Jobs

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14. Foreign Associates
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Here's how Foreign Associates is used in Patent Agent jobs:
  • Instructed foreign associates regarding filing and prosecuting patent applications in foreign jurisdictions.
  • Directed foreign associates prosecute patent applications in foreign jurisdictions.
  • Instruct foreign associates on responding to Office actions and assist clients in managing their worldwide IP portfolios.
  • Worked with foreign associates to prosecute patent applications in Europe, China, Japan and Korea.

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4 Foreign Associates Jobs

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15. Civil Litigation
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7 Civil Litigation Jobs

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16. Business Methods
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Here's how Business Methods is used in Patent Agent jobs:
  • Prosecuted patent applications related to computer software and hardware, including business methods.
  • Prepared and prosecuted patent applications in chemical, pharmaceutical, life sciences and software arts, medical devices and business methods.

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1 Business Methods Jobs

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17. Mechanical Equipment
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18. R
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Here's how R is used in Patent Agent jobs:
  • Determined title defects of both international and domestic patents for cardiac device manufacturer and biochemistry corporation arising from bankruptcy and merger.
  • Prosecuted numerous office actions, and served as a technical adviser for litigation, preparation and prosecution matters.
  • Prosecuted patent applications in electronics, optical and medical device technologies.
  • Collaborated with litigators and participated in related post-grant proceedings.
  • Prosecuted patent applications re transgenic plants.
  • Awarded DARPA funding for several years on research work in developing new high- performance E-beam resists.
  • Awarded 2-year research program for funding and collaborating with professors at state university in New Jersey.
  • Drafted at least twenty applications in electronics, LCD displays, and medical device technologies.
  • Key Contributions: Exceeded metrics for completed trademark registrations during the year in the position.
  • Set up and integrated operations for client's musical database.
  • Prepared several non-provisional applications to various clients and prepared claim charts for patent infringement litigations.
  • Researched viability of business method patent for Lhreturnables.com's new business process.
  • Prosecuted mechanical and electrical U.S. patent applications for Bellsouth and Microsoft.
  • Provided litigation support, including: drafting arguments for Markman Hearings, performing legal research, and consulted on technical issues.
  • Provided support for ongoing litigations, including: drafting, legal and technical research, and providing technical expertise and analysis.
  • Key Member of the Legal department supporting the on-going efforts of the medicinal chemistry department.
  • Drafted multiple inter-partes and ex parte re-examination requests.
  • Performed Prior Art/Patentability Searches, provided Patentability Opinions
  • Recognized as Master Inventor at IBM East Fishkill for outstanding innovation record: Responsible for IP activities and invention mentorship.
  • top antireflective coatings, bottom antireflective coatings, underlayers and Si containing antireflective coatings.

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19. Counsel
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Here's how Counsel is used in Patent Agent jobs:
  • Coordinate with outside patent counsel and internal engineer to prepare and prosecution US and international patent applications.
  • Assist in-house/outside counsel with legal opinions pertaining to validity, non-infringement and opposition activities.
  • Initiated, managed and directed outside counsel prosecuting patent portfolios.
  • Performed due diligence under supervision of outside litigation counsel.
  • Counseled and consulted business managers and inventors, and aided management of patent portfolios, ranging from 25 to 100+ cases.
  • Collaborated with clients' in-house counsel to discuss IP strategy and facilitate procuring patent rights in domestic and foreign jurisdictions.
  • Conducted freedom to practice and prior art searches, drafted patents applications, and worked with outside patent counsel.
  • Performed U.S. patent prosecution in-house previously performed by outside counsel, saving $1000 to $3000 per response.
  • Interacted directly with corporate counsel, management, and innovators in surveillance of competitor IP activities.
  • Drafted patent applications, responded to office actions, and provided patent and trademark counsel
  • Oversee work performed by outside counsel, including drafting and prosecuting of patent applications.
  • Instructed foreign counsel to efficiently respond to communications received from the foreign patent office.
  • Drafted arguments to legal counsels and Patent Board of Appeals and Interference.
  • Counseled R&D engineers in patent matters and IP awareness.
  • Counseled on trademark registration and maintenance in the U.S. and internationally.
  • Drafted patent applications for filing and review by outside counsel.
  • Performed trademark availability searches and counsel clients regarding trademark registrability.
  • Conferred with in-house patent counsel on technical merits/patent strategy.
  • Assist counsel with drafting patentability, freedom-to-operate and patent law opinions for U.S. and foreign clients.
  • Patent prosecution Patent counseling, including infringement, validity, and freedom to operate opinions Patent litigation

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80 Counsel Jobs

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20. Examiner Interviews
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Here's how Examiner Interviews is used in Patent Agent jobs:
  • Conducted Examiner interviews to further advocate and achieve a high application allowance rate without compromising on claim quality.
  • Prosecuted 30 US patent applications, filing office action responses / conducting examiner interviews.
  • Experience with Examiner interviews at the USPTO over a wide range of technologies.
  • Conducted examiner interviews to obtain patentability agreements and/or formulate patentability analyses for the client.

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2 Examiner Interviews Jobs

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21. Computer Hardware
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22. Discovery Responses
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1 Discovery Responses Jobs

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23. Electro-Mechanical
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Here's how Electro-Mechanical is used in Patent Agent jobs:
  • number: 68387) Prosecuted electro-mechanical, environmental utility patent applications.

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24. International Clients
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Here's how International Clients is used in Patent Agent jobs:
  • Patent agent representing international clients, and training foreign patent associates regarding US patent practice and policy.

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1 International Clients Jobs

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25. FTO
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26. Signal Processing
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Here's how Signal Processing is used in Patent Agent jobs:
  • Prepared and prosecuted patent applications in the subject area of communication, signal processing, control, and medical device system area

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27. Engineering Department
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28. Materials Science
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Here's how Materials Science is used in Patent Agent jobs:
  • Drafted multiple applications in electronics and materials science.
  • Work product areas: materials science, chemicals, bio/agro-technology, pharmaceuticals, and polymerics.

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29. Mechanical Arts
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Here's how Mechanical Arts is used in Patent Agent jobs:
  • Prepared and prosecuted patent applications in the mechanical arts.

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2 Mechanical Arts Jobs

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30. Electrical Systems
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31. Semiconductor
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Here's how Semiconductor is used in Patent Agent jobs:
  • Drafted invalidity and non-infringement opinions in various technologies including semiconductor materials and electronics applications.
  • Performed all aspects of patent prosecution for a major semiconductor foundry including client relations, drafting patents (10).
  • Prepared patent applications related to polymers, recombinant microorganisms, chemical engineering processes, oil exploration technology, and semiconductor fabrication.
  • Conducted in-depth research and documentations management for 6 separate patent applications in the Chemical/Semiconductor arts (Radmaker Lim & Nugent).
  • Aided in drafting and preparing of detailed documents for patent applications in the Chemical/Semiconductor arts (Radmaker Lim & Nugent).

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3 Semiconductor Jobs

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32. Non-Infringement Opinions
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Here's how Non-Infringement Opinions is used in Patent Agent jobs:
  • Performed research, analysis, editing and drafting of invalidity and non-infringement opinions, including opinions involving sophisticated chemistry.
  • Performed research and analysis for invalidity and non-infringement opinions.
  • Performed analyses for inclusion in non-infringement opinions.
  • Performed research, analysis, editing, and drafting of non-infringement opinions.

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33. Electrical Arts
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Here's how Electrical Arts is used in Patent Agent jobs:
  • Drafted and prosecuted patent applications in the electrical arts.

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34. Competitive Analysis
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35. Business Development
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Here's how Business Development is used in Patent Agent jobs:
  • Assist in business development in patent assessment and new technology evaluation.

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36. EPO
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Here's how EPO is used in Patent Agent jobs:
  • Provided monthly metric reports of international patent portfolio to internal customers.
  • Report to senior management on Corporate Intellectual Property.
  • Provided technical support during depositions and trials.
  • Prepared search reports based on information gathered.
  • Aided in preparing our expert witness for depositions, and aided in preparing interrogatories for defendant's expert witness.
  • Drafted and filed reporting letters from patent office to clients.
  • Accelerated and streamlined the invention report submission and review process.
  • Performed Document Review and Expert Witness Reports for Litigation Cases.
  • Assisted with responding to and reporting correspondence from foreign associates.
  • Prepared responses to reports from patent examiners.
  • Prepared portfolio reports for clients.
  • Expanded practice technical areas of expertise from mechanical devices to chemical, bio-technology and micro-electrical deposition machining.
  • Researched and generated patentability reports for client inventions.
  • Deliver patentability reports to clients.
  • Monitored and managed outside counsel activities of chemical and biotech patent portfolios, mined inventions, reported new inventions.
  • Conducted research and drafted reports on technology transfer per request from Japanese Government.
  • Review patent documents Conduct prior art search and analysis Prepare patent search/analysis report
  • Reported to the same principal attorneys at Morgan, Lewis & Bockius; Baker & McKenzie; and Jenkens & Gilchrist 2004-2009***

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37. Biology
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Here's how Biology is used in Patent Agent jobs:
  • Draft and Prosecute Patents in the areas of electrical engineering, IT, medicine, and biology.

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8 Biology Jobs

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38. Wireless Communications
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39. LLC
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1 LLC Jobs

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40. Consumer Electronics
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Here's how Consumer Electronics is used in Patent Agent jobs:
  • Executed patent prosecution quality control and concentrated on consumer electronics and carbon nanotechnology applications.

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41. Non-Disclosure Agreements
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Here's how Non-Disclosure Agreements is used in Patent Agent jobs:
  • Researched and drafted legal opinions, reviewed/edited non-disclosure agreements, and consulted in settlement and negotiation proceedings.
  • Prepared and negotiated non-disclosure agreements and contracts for the programs.

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42. Art References
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Patent Agent Jobs

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20 Most Common Skills For A Patent Agent

Patent Applications

33.8%

Intellectual Property

12.4%

Medical Devices

7.3%

Invention Disclosures

6.9%

PTO

6.3%

Art Searches

4.4%

Due Diligence

3.5%

PCT

3.3%

Biotechnology

2.9%

Legal Documents

2.7%

Trademark Applications

2.3%

Information Disclosure Statements

1.9%

Law Firm

1.8%

Foreign Associates

1.8%

Civil Litigation

1.8%

Business Methods

1.7%

Mechanical Equipment

1.7%

R

1.4%

Counsel

1.1%

Examiner Interviews

1.0%
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Typical Skill-Sets Required For A Patent Agent

Rank Skill
1 Patent Applications 29.7%
2 Intellectual Property 10.9%
3 Medical Devices 6.4%
4 Invention Disclosures 6.1%
5 PTO 5.5%
6 Art Searches 3.9%
7 Due Diligence 3.1%
8 PCT 2.9%
9 Biotechnology 2.6%
10 Legal Documents 2.4%
11 Trademark Applications 2.0%
12 Information Disclosure Statements 1.7%
13 Law Firm 1.6%
14 Foreign Associates 1.6%
15 Civil Litigation 1.6%
16 Business Methods 1.5%
17 Mechanical Equipment 1.5%
18 R 1.3%
19 Counsel 0.9%
20 Examiner Interviews 0.9%
21 Computer Hardware 0.9%
22 Discovery Responses 0.8%
23 Electro-Mechanical 0.8%
24 International Clients 0.8%
25 FTO 0.8%
26 Signal Processing 0.7%
27 Engineering Department 0.7%
28 Materials Science 0.6%
29 Mechanical Arts 0.6%
30 Electrical Systems 0.6%
31 Semiconductor 0.6%
32 Non-Infringement Opinions 0.6%
33 Electrical Arts 0.5%
34 Competitive Analysis 0.4%
35 Business Development 0.4%
36 EPO 0.4%
37 Biology 0.4%
38 Wireless Communications 0.4%
39 LLC 0.3%
40 Consumer Electronics 0.3%
41 Non-Disclosure Agreements 0.3%
42 Art References 0.3%
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410 Patent Agent Jobs

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