Description
Represent clients before the USPTO, PTAB, and courts to secure, enforce, and defend patent rights; draft and prosecute patent applications; and advise on IP strategy, transactions, and risk. May focus on specific technologies or manage global patent portfolios across industries.
- • Advise clients on patentability, infringement risk, portfolio strategy, and IP rights and obligations.
- • Interpret patent statutes, USPTO rules, MPEP guidance, and case law for inventors and businesses.
- • Conduct invention disclosure meetings and translate innovations into patentable subject matter.
- • Draft, file, and prosecute U.S. and PCT patent applications, including claims, specifications, and drawings.
- • Prepare and file responses to Office Actions, amendments, RCEs, and appeals.
- • Conduct and analyze prior art, landscape, and freedom-to-operate searches.
- • Prepare opinions on patentability, validity, enforceability, and noninfringement.
- • Represent clients before the USPTO, PTAB, and in federal courts on patent matters.
- • Develop litigation strategies, including claim construction, invalidity, and infringement arguments.
- • Present technical and legal arguments in hearings, depositions, and trials.
- • Evaluate the merits of filing or defending patent lawsuits, IPRs, PGRs, or reexaminations.
- • Manage domestic and international prosecution strategies with foreign associates.
- • Draft and negotiate IP-related agreements, including licenses, NDAs, assignments, and joint development agreements.
- • Negotiate settlements and cross-licenses to resolve patent disputes.
- • Prepare briefs, petitions, and appellate filings for PTAB and the Federal Circuit.
- • Analyze patent portfolios and chain of title; record assignments and maintain IP records.
- • Supervise and mentor patent agents, paralegals, and technical specialists.
- • Maintain prosecution dockets, budgets, and client reporting; ensure deadline compliance.
- • Conduct IP due diligence for corporate transactions and technology acquisitions.
- • Collaborate with technical experts and engineers to gather evidence and support arguments.
- • Provide guidance on open-source, standards-essential patents, and regulatory impacts on IP.
- • Participate in policy advocacy or comment on proposed USPTO rules and IP legislation.
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Last reviewed: Jan 2026
