Our client, a leading technology company, is seeking a Patent Agent to join its thriving company.
The successful candidate will support one or more business segments of the Company, while working with in-house counsel, outside patent counsel, business area managers, technical leads, and inventors. Duties include: preparing, prosecuting, and filing patent applications, completing patent searching and IP clearances, providing IP training, and performing other activities in support of Company’s patent portfolio. In addition, there may be a modest amount of litigation and transactional support. The legal team member will report to the Director of Intellectual Property, who reports to the Company’s General Counsel.
The successful candidate will have 5+ years of experience in intellectual property law including patent application drafting, filing and prosecution (with experience in IP-related counseling, litigation, and licensing a plus), and 5+ years of technical experience in a field related to our client’s existing products. S/he will have excellent academic credentials and experience in a company and/or a major law firm.
Our client is looking for a creative and confident self-starter who is a team player, but is also comfortable working autonomously. S/he will be able to handle multiple activities and manage a variety of legal matters often under time pressure. The candidate must possess strong interpersonal and communication skills (written and oral) to establish credibility and facilitate an effective working relationship with a wide range of Company representatives. Other critical skills include business acumen, initiative, innovation, prioritization/time management, attention to detail, strategic thinking, goal and team orientation, and the ability to develop relationships with a variety of people at different levels and functions throughout the Company.
Responsibilities include:
Patent Application Drafting and Prosecution
- Draft US patent applications, and prosecute those applications, for one or more business units within the Company.
- Direct local patent counsel regarding foreign patent filings.
- Electronically file correspondence (including applications and office action responses) with the USPTO using Private PAIR system.
Patent Portfolio Management
- Counsel one or more business units within the Company regarding patent maintenance, abandonment and/or divestiture decisions.
Product Clearance
- Conduct and interpret prior art searches
- Conduct infringement analysis
- Reviewing, gathering and analyzing technical literature.
- Identify possible work-arounds
- Assess patent validity / develop invalidity analysis
Invention Disclosure Review
- Quickly reviewing and gaining an understanding of technical aspects of Company inventions and/or technical search concepts
- Perform extensive database research
- Evaluating the patentability of innovations
- Draft claim(s) for the invention
Litigation Support
- Conduct infringement analysis
- Assess patent validity / develop invalidity analysis
- Assist in the preparation, review, and submission of patent challenges (e.g. re-exams, reviews, pre-issuance submissions, and oppositions)
Conduct Training and Outreach
- Provide IP training to the business units in order to educate the JDSU technical and scientific community in IP matters
- Lead IP brainstorming with members of the business units
- Partner with business units to facilitate technology initiatives and IP protection
M&A Support
- Support patent portfolio evaluation
Requirements:
- USPTO registration
- Minimum of five (5) years as a certified patent agent.
- Ability to prepare and prosecute patent applications.
- Able to conduct patent searches and assessments.
- Engineering experience in one or more of: optical systems optical communication, communication test and measurement.
Preferences:
- Advanced degree, Master’s or PhD
- Relevant patent application drafting and prosecution experience
- Invention mining experience
- Patent, claim, prior art, and landscape analysis experience
Local candidates only.
Our client offers a very competitive and attractive compensation package. This is a unique opportunity to be part of a dynamic and thriving company.
Our client has engaged Solutus Legal Search, LLC on an exclusive basis. All submissions made directly to our client will be forwarded to Solutus for review and evaluation.
Contact:
Please submit your resume to search@solutuslegal.com.
Additional Info:
Employer Type: Corporation
Job Location: Washington DC/Maryland/Northern Virginia Metro Region