Patent Agent

MERCHANT & GOULD PC
New York, NY
Merchant & Gould P.C. seeks a Patent Agent in New York, NY, with industrial engineering expertise to prepare, file, and prosecute patent applications, and to analyze patents and patent portfolios with respect to certain products or technologies. The specific duties include:

  • Assist in the preparation and prosecution of patent applications related to integrated systems that span multiple technical areas, including mechanical, electrical, software, and chemical technologies;
  • Draft and revise patent applications and claims directed to and in technical areas including inventory control, material processing and flow, methods of using including user interfaces and human work factors, manufacturing processes, efficiency improvements, quality and reliability improvements, safety improvements, and cost savings;
  • Draft amendments and responses to the United States Patent Office (USPTO) with regard to procedural and substantive matters;
  • Assist in the preparation of Appeal Briefs for patent applications before the USPTO Board of Appeals;
  • Provide support for opinion work, such as analyzing prior art documents in the technical areas listed above, USPTO actions, and developing and writing persuasive arguments in response to Office Actions both in the United States and abroad;
  • Analyze third party patents, including patents relating to sequences of operations in the fabrication and assembly of parts or products, and including the technical areas listed above;
  • Communicate regularly with clients and the USPTO regarding the status of work in progress;
  • Assist in Practice Section management by making organizational recommendations to seamlessly meet clients’ needs, suggest strategies for improving efficiency, increasing revenue, and attracting new clients;
  • Perform necessary legal and technical research using all available resources including libraries and computer database systems;
  • Provide technical expertise in related litigation or other contested matters;
  • Assist in the preparation and filing of patent applications originating from outside of the US for filing with the USPTO;
  • Assist in the analysis of US Office Actions and advising law firms outside of the US on response strategies;
  • Draft patent applications in view of foreign laws and practice and corresponding with foreign counsel to file patent applications in foreign jurisdictions;
  • Correspond with foreign counsel to develop strategies for responding to foreign communications to prosecute patent applications in foreign jurisdictions;
  • Communicate with clients regarding the status of the patent applications and proposed strategies and claim amendments; and
  • Accountable for defined billable goal.
The position requires a Bachelor’s degree in Electrical Engineering, Industrial Engineering, Safety Engineering and 7 years of progressively responsible experience reviewing patents and determining patentability in the areas of electrical arts and industrial engineering, internationally in East Asian markets. (In the alternative, we accept a Master’s degree in Electrical Engineering, Industrial Engineering, Safety Engineering and 5 years of progressively responsible experience reviewing patents and determining patentability in the areas of electrical arts and industrial engineering, internationally in East Asian markets.) The experience must include 5 years of patent work, including electronic devices, electrical/computerized systems and processes, computer software, and machine learning technology. Must be registered (or have limited recognition status) with the United States Patent and Trademark Office. Occasional travel (5-10%) to meet clients across the US and visit employer headquarters in Minneapolis. May occasionally work from home, but must reside within normal commuting distance of our New York office. Wage: $130,000/year. Please apply at . If you need any accommodation during the application or the recruiting process, please contact our Human Resources Department at [email protected].

Posted 2025-07-30

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