Job description

Location: Minneapolis, MN Experience: 2-4 years Practice Area: Intellectual Property – Patent Prosecution (Mechanical Engineering/Electrical Engineering) Barnes & Thornburg’s nationally recognized intellectual property practice delivers the strength of a powerhouse IP boutique housed within a full-service AmLaw 100 firm. With 125+ dedicated IP attorneys and agents, we have one of the largest and most technically skilled IP teams in the country, earning consistent recognition in Chambers USA, IAM Patent 1000, World Trademark Review 1000, and IP Stars. Our practitioners advise clients from startups to Fortune 500 companies, who call us "the absolute best" and their "go-to for all things intellectual property." Position Overview We are seeking an associate with 2-4 years of experience to join our highly regarded Intellectual Property Department in Minneapolis. The ideal candidate will have a mechanical engineering background with electrical engineering drafting experience and familiarity with wireless device hardware including smartphones, tablets, and wearables. This is an excellent opportunity to work on cutting-edge technologies within a collaborative, high-performing team. Key Responsibilities - Prepare and prosecute U.S. and international patent applications - Draft patent applications, including specifications, claims, and drawings descriptions, for inventions relating to consumer electronics hardware and electromechanical systems - Conduct prior art searches and support patentability, freedom-to-operate, and invalidity analyses, including clearance opinions for product launches - Respond to USPTO Office Actions and manage prosecution strategy in coordination with partners and clients - Conduct inventor interviews and distill complex technical subject matter into clear, precise patent disclosure - Support due diligence efforts related to patent portfolios in transactions and licensing matters - Assist with post-grant proceedings, including inter partes review and reexamination, as needed - Manage docket deadlines and maintain accurate file records Requirements: - Juris Doctor (JD) from an accredited law school, with strong academic achievement - Registration in good standing before the U.S. Patent and Trademark Office - Member of the bar in the state where the position is based, or eligibility for admission - Bachelor's degree in mechanical engineering - 2-4 years of patent prosecution experience, preferably at a large law firm or boutique IP firm - Demonstrated experience drafting and prosecuting patent applications in both mechanical and electrical engineering subject matter - Strong written and verbal communication skills - Ability to manage a substantial docket and meet competing deadlines - Detail-oriented with a commitment to producing high-quality work product Preferred Qualifications: - Substantive familiarity with wireless device hardware - Experience with patent clearance and freedom-to-operate projects - Experience managing patent portfolios - Experience supporting patent opinion letter preparation - Familiarity with non-infringement and invalidity analyses - Experience assisting with patent due diligence for corporate transactions and M&A matters - Advanced degree in mechanical engineering, electrical engineering, or a closely related field is a plus We will not consider resumes submitted by external agencies or recruiters for this position. Recruiters and agencies will not be compensated for assisting Barnes & Thornburg LLP in recruiting for this position, regardless of whether such party has a recruiting contract with us. Equal Employment and Opportunity Statement: Barnes & Thornburg is committed to equal employment opportunity in both principle and as a matter of policy. We will recruit, hire, train, promote, compensate and provide benefits to all applicants and employees without regard to ancestry, sex, race, color, ethnicity, national origin, gender, age, religion, religious creed, mental and/or physical disability, medical condition, military and/or veteran’s status, genetic information, marital status, sexual orientation, gender identity and/or expression, or any other basis protected by applicable federal, state and local laws. This policy applies to all recruiting, hiring, promotions, upgrades, layoffs, compensation, benefits, terminations and all other privileges, terms and conditions of employment. The firm complies fully with all federal, state and local equal employment opportunity laws.

Requirements

Must-haves

Location: Minneapolis, MN
Experience: 2-4 years
Practice Area: Intellectual Property – Patent Prosecution (Mechanical Engineering/Electrical Engineering)
Position Overview
Prepare and prosecute U.S. and international patent applications
Draft patent applications, including specifications, claims, and drawings descriptions, for inventions relating to consumer electronics hardware and electromechanical systems
Conduct prior art searches and support patentability, freedom-to-operate, and invalidity analyses, including clearance opinions for product launches
Respond to USPTO Office Actions and manage prosecution strategy in coordination with partners and clients
Conduct inventor interviews and distill complex technical subject matter into clear, precise patent disclosure
Support due diligence efforts related to patent portfolios in transactions and licensing matters
Assist with post-grant proceedings, including inter partes review and reexamination, as needed
Manage docket deadlines and maintain accurate file records
Juris Doctor (JD) from an accredited law school, with strong academic achievement
Registration in good standing before the U.S. Patent and Trademark Office
Member of the bar in the state where the position is based, or eligibility for admission
Bachelor's degree in mechanical engineering
2-4 years of patent prosecution experience, preferably at a large law firm or boutique IP firm

Nice-to-haves

Substantive familiarity with wireless device hardware
Experience with patent clearance and freedom-to-operate projects
Experience managing patent portfolios
Experience supporting patent opinion letter preparation
Familiarity with non-infringement and invalidity analyses
Experience assisting with patent due diligence for corporate transactions and M&A matters
Advanced degree in mechanical engineering, electrical engineering, or a closely related field is a plus

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