6 days old

Technical Advisor

White & Case LLP
Boston, Massachusetts 646029
  • Job Type
  • Job Status
    Full Time

Firm Summary


White & Case is an elite global law firm serving leading companies, financial institutions and governments worldwide. Our long history as an international firm means we are perfectly placed to help our clients resolve their most complex legal challenges wherever they may be.


With lawyers operating from more than 40 locations, working in virtually every country of the world, we have invested heavily in building a high-quality full-service practice competing at the top of the market. We are distinguished by our on-the-ground presence in the world’s key financial markets and our strengths in handling complex cross-border work.


It’s not just about our global network of offices; it’s the global interconnectedness of the Firm that our people, and our clients, value most. We work well together across geographic and practice boundaries. It’s one of the reasons we attract and retain cross-border work. And why we attract a diverse group of people.


Our lawyers are globally minded, enterprising, collaborative and committed to excellence. Diversity is a core value of our Firm and it has been recognized with numerous awards and top rankings around the world. Our people represent 90 nationalities and speak 80 languages.



Position Summary


Technical advisors are non-lawyers who work in the Global Intellectual Property Practice under the supervision of Intellectual Property attorneys in providing legal services to clients.   Their responsibilities include assisting attorneys and IP senior legal assistants in the representation of clients involved in patent prosecution matters, contested patent proceedings, IP litigation and due diligence, and the responsibilities may vary depending upon the project to which they are assigned.



Our Practice Area


White & Case employs over 2000 lawyers and more than 200 legal assistants located in 38 offices around the world. We thrive on innovation and diversity and the benefits that such qualities afford our clients and ourselves. Clients choose to work with us because we have unparalleled expertise and passion to solve the complex issues that affect the success or the very survival of their organizations. Our open door policy promotes candid communication among partners, associates, legal assistants and staff. We attract dynamic people with formidable talents and we encourage them to be both generous with their knowledge and forthright with their questions.



Duties and Accountabilities


Patent Prosecution and Counseling Responsibilities


1. Prepare, file and prosecute patent applications with the U.S. Patent and Trademark Office (“PTO”) and in foreign jurisdictions in a diverse range of technology areas (e.g. pharma, business methods, computer chips and hardware, medical and personal care devices, heating systems, satellites, laminates, polymers).


Analyze invention disclosures and develop global patent strategies.


Handle all prosecution and filing correspondence with clients and global patent offices and local agents, and respond to all patent office communications regarding patent applications. This includes counseling clients and preparing prosecution papers, and instructing local agents in relevant foreign countries. It also includes conducting examiner interviews and appearing in oral proceedings at patent offices, where necessary to represent the client’s interest in obtaining robust global patent protection.


2. Prepare analyses and submissions for contested patent proceedings, including petitions for Inter Partes Review and EPO oppositions. It may also include supporting IP litigation cases. Responsibilities would include preparing patentability analyses, including prior art assessments, and infringement and validity contentions. It may also include working with expert witnesses and developing declarations for use in infringement and validity disputes.


3. Assist in conducting IP clearance searches and freedom-to-operate analyses to support client product development efforts, licensing and acquisitions



Key Qualifications


  • Bachelor of Science degree – Electrical Engineering; Mechanical Engineering; Biochemistry
  • Minimum GPA – 3.5
  • Advanced degrees - MS or PhD a plus
  • Patent Agent registration a plus
  • Related work experience in a corporate or law firm environment




The Firm may modify and amend this job description at any time at its sole discretion. Nothing herein creates a contract of employment or otherwise modifies the at-will nature of employment.


1The above is a general description of the essential duties associated with this position and does not represent an exhaustive or comprehensive list of all duties.


Posted: 2019-02-08 Expires: 2019-03-10

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Technical Advisor

White & Case LLP
Boston, Massachusetts 646029

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