Gracenote, Inc. is seeking a Patent Specialist to work in the San Francisco Bay Area. The Patent and Information Specialist will interface with the technical, business and legal groups of the Company and external service providers to facilitate the day-to-day activities involved in patent prosecution, be responsible for organization of technical documents and publications, and be a gatekeeper for document exchange in certain third party relationships.
This position will play a key role in developing, organizing, obtaining and maintaining the intellectual property portfolio of the Company.Gracenote is looking for an enthusiastic team player that works well in a team environment. Candidate must demonstrate excellent writing, analytical and communication skills. The successful candidate will have an educational background in electrical engineering or computer science, in-house or law firm experience in the preparation and prosecution of patent applications, freedom-to-operate, and validity and infringement analysis in the multimedia technology field. The successful candidate will also have the requisite technical qualifications to assist in the drafting of applications and responses to office actions. The position will involve working closely with scientists and management as well as with an external IP firm and consultants to secure intellectual property for inventions worldwide. The position requires drafting and helping prosecuting patent applications worldwide; patent and literature database searching; reviewing and evaluating new invention disclosures; coo! rdinating with outside counsel and communicating with inventors in preparation and prosecution of patent applications; conducting patentability assessments; and supporting intellectual property opinion work and landscaping efforts. Other key responsibilities include participating in due diligence with in-house and outside counsel to evaluate IP portfolios and technologies.
• Prepare, file and prosecute patent applications worldwide.
• Coordinate with and oversee outside counsel in the preparation and prosecution of patent applications.
• Interface with scientists/engineers to collect and organize invention disclosures, details and data for patent applications.
• Assist in the development of patent filing, claim construction, and prosecution process.
• Conduct patentability assessments.
• Search patent and open literature in complex areas of science, and provide reports on prior art, patent references, monitoring of competition, due diligence and freedom to operate.
• Interface with IP counsel (internal and external) and provide information for the preparation, filing and prosecution of patent applications, freedom-to-operate analyses, and guidance on technical matters
• Support intellectual property opinion work and landscaping efforts.
• Oversight and regulation of patent portfolio data management and status
• 2-5 years of in-house or law firm experience in the preparation and prosecution of patent applications, freedom-to-operate, and validity and infringement analysis in the multimedia technology field.
• Undergraduate degree in electrical engineering or computer science
• Excellent writing, analytical and communication skills.
• Familiarity with scientific and intellectual property databases and use of the same.
• Ability to organize patent and technical literature data in the context of an internal electronic database, and maintain such a database.
• Working knowledge of the patent laws, regulations and patent practice in general.
• Organized, independent, detailed oriented, capable of working on multiple tasks.
• Enthusiastic and works well in a team environment. Proficient with Microsoft Office components (Word, Excel, PowerPoint, etc.).
• Graduate degree in electrical engineering or computer science Licensed to practice before the U.S. Patent and Trademark Office
B.S. in E.E. or C.S.
Apply online by visiting: http://www.gracenote.com/careers.
Employer Type: Large Corporation
Job Location: SF Bay Area (Emeryville, California)