Patent Agent / Technical Advisor – Software & AI

About the Role

Our client is seeking a highly motivated Patent Agent / Technical Advisor with substantive industry experience in software, computer science, or a related technical field to join a busy patent counseling, prosecution, and litigation practice.

This role combines strong technical expertise with intellectual property work, including prior art research, patent application drafting, prosecution support, freedom-to-operate analysis, and technical support for patent litigation. The ideal candidate has broad knowledge of computer science or electrical engineering, with artificial intelligence and machine learning expertise strongly preferred.

Key Responsibilities

• Conduct prior art database searches for:

  • Patentability analyses

  • Freedom-to-operate (FTO) analyses

• Analyze patents, scientific papers, technical documentation, and related materials

• Draft patent applications

• Draft responses to USPTO Office Actions

• Assist patent attorneys with patent prosecution and counseling matters

• Provide technical analysis and support for patent litigation

• Advise attorneys on complex technology issues in preparation for depositions

• Translate sophisticated technical concepts into clear written and verbal explanations

• Collaborate closely with attorneys and other members of the intellectual property team

Required Qualifications

• Degree in:

  • Computer Science

  • Software-related discipline

  • Electrical Engineering

  • Related technical field

• Substantive industry experience involving software, computer science, or related technologies

• Broad technical knowledge in computer science and/or electrical engineering

• Strong technical and analytical capabilities

• Excellent written and verbal communication skills in English

• Ability to analyze complex patents, scientific papers, and technical documentation

• Strong initiative and ability to learn new technologies quickly

• Ability to work effectively in a collaborative environment

• Must be eligible to sit for the USPTO registration examination and otherwise satisfy the requirements for registration as a patent agent

Preferred Qualifications

• Expertise in:

  • Artificial Intelligence (AI)

  • Machine Learning (ML)

• Patent prosecution experience

• Patent application and Office Action drafting experience

• Prior art and freedom-to-operate research experience

• Experience supporting patent litigation or deposition preparation

• Relevant software or technology industry experience

Ideal Candidate Profile

• Technically sophisticated professional with a strong software or computer science foundation

• AI/ML expertise or meaningful exposure to artificial intelligence technologies

• Excellent technical writer capable of translating complex concepts into patent documentation

• Detail-oriented and analytical with strong research skills

• Fast learner who can quickly understand unfamiliar technologies

• Collaborative professional interested in working across patent counseling, prosecution, and litigation matters

Recruiter Insight

Target Candidates

• Patent Agents – Software/Computer Science

• Patent Technical Advisors

• Patent Engineers

• Patent Specialists

• IP Technical Specialists

• Software Patent Agents

• AI/ML Patent Agents

Must-Haves

• Degree in software, computer science, electrical engineering, or a related technical field

• Substantive relevant industry/technical experience

• Broad computer science or electrical engineering knowledge

• Strong technical writing and analytical skills

• Eligibility to sit for the USPTO registration exam

Strong Assets

• Artificial intelligence and machine learning expertise

• Patent application drafting

• Office Action responses

• Prior art searching

• Freedom-to-operate analysis

• Patent litigation support

Important Distinction: Candidates do not need to already be registered patent agents. The stated requirement is that they must be eligible to sit for the USPTO registration exam and otherwise meet the requirements for patent-agent registration.

Additional Benefit: Law school tuition assistance is available to qualifying patent agent candidates.