Patent Agent – Small Corporation – Victor, N.Y.

LSILSI SOLUTIONS® located in beautiful Victor, New York, is a dynamic and growing medical device company dedicated to advancing minimally invasive therapeutics through research, development, manufacturing, and marketing of minimally invasive surgical instruments.

We have more than doubled in size over the last three years. Employing over 300 employees and still growing! Offering competitive salaries and benefits to all our full time employees.

Referrals - Feel free to forward our Website information to your colleagues, friends and family that may also be in search of a new opportunity with a great company.

Summary:  The Patent Agent I-II applies his/her experience, knowledge, organization skills, and communication skills to 1) prepare and file high-quality and timely patent applications with the U.S. Patent and Trademark Office (USPTO) and U.S. Receiving Office; 2) coordinate regional and foreign national stage patent application filings with foreign agents; 3) vigorously and effectively prosecute pending patent applications; 4) ensure accurate docketing procedures and systems are followed and maintained; 5) effectively and efficiently search the prior art; and 6) work closely with LSI’s Intellectual Property Manager to facilitate and support intellectual property efforts.  Activities will be of a scheduled and unscheduled nature.  Travel may be required, but is not anticipated.  This position may involve frequent & prolonged standing and some lifting.

Essential Job Duties & Responsibilities:

  • Prepare and file high-quality non-provisional and provisional utility patent applications with the U.S. Patent and Trademark Office (USPTO) in a timely fashion as assigned.
  • Prepare and file high-quality ornamental design patent applications with the USPTO in a timely fashion as assigned.
  • Prepare and file high-quality international PCT patent applications with the U.S. Receiving Office in a timely fashion as assigned.
  • Develop and follow appropriate patent claim strategies and be able to communicate such strategies to internal clients/management proactively and as requested.
  • Actively research and identify intellectual property potential for new LSI technologies.
  • Perform due diligence and patent validity and infringement analyses on existing LSI patents and patents from other companies, as requested.
  • Vigorously and efficiently recommend and implement appropriate courses of action and responses to patent offices during patent application prosecution in a timely fashion and in line with LSI’s goals to help develop an intellectual property portfolio.
  • Effectively research prior art.
  • Advise pertinent staff regarding associated U.S. and PCT patent rules and regulations to adhere to in filing proceedings.
  • Understand appropriate forms needed to accompany U.S. and PCT patent-related submissions and how to correctly fill out such forms.
  • Correctly and efficiently work with the USPTO EFS-Web system when submitting U.S. and/or PCT documents.
  • Understand and work effectively with the USPTO Private-Pair System, Maintenance Fee Payment System, and Electronic Patent Assignment System.
  • Understand and use paper filing methods for patent-related submissions in the event that electronic methods are not available.
  • Follow processes to ensure effective compliance with duty of disclosure for relevant pending U.S. patent applications.
  • Understand all docketing considerations for various stages in U.S. and PCT prosecution, and be able to apply such knowledge to ensure docket system entries are correctly made by administrative staff, advising appropriate corrections and courses of action as needed to help maintain an effective docketing check-and-balance system for docketing accuracy.
  • Correspond with foreign agents for patent matters and assist with foreign filings and prosecution where applicable.
  • Communicate effectively with the USPTO and relevant examiners and boards.
    Organize and prioritize numerous tasks and complete them under time constraints and in an efficient and cost effective manner.
  • Interact professionally with clients, lawyers, and employees at all levels and provide information with ordinary courtesy and tact while safeguarding confidentiality.
  • Follow docketing and filing procedures for patent matters to ensure consistent and accurate tracking of related deadlines and activities.
  • Ensure patent maintenance and annuity fees are authorized by company management and paid in a timely fashion.
  • Responsibly and effectively utilize the USPTO financial manager for U.S. and PCT patent transactions.
  • Work effectively with an assigned mentor/manager on the above responsibilities, receptively implementing suggestions and constructive feedback provided by the assigned mentor/manager.  Level of mentoring will vary, depending on demonstrated knowledge and experience.
  • Understand and interpret 2D drawings and 3D CAD models, as well as actual prototypes, and ask appropriate questions of inventors, engineers, and/or designers to obtain a thorough understanding of LSI technology.
  • Attend labs where technology under development is being tested to gain more understanding of how the technology is used.
  • Perform other related duties and projects as business needs require at direction of management.

Recommended Skills:

  • Thorough knowledge of U.S. Patent Laws, Rules, and Examination Procedures.
  • Thorough knowledge of PCT Rules and Procedures.
  • Demonstrated technical proficiency.
  • Ability to identify and understand novel mechanisms and processes.
  • Excellent communication skills (verbal and written).
  • Excellent attention to detail.
  • Excellent persuasion skills and ability to think logically.
  • Trustworthy.
  • Receptive to training and constructive criticism.
  • Works independently, but is comfortable asking questions and receiving direction.
  • Extremely organized.
  • Enjoys reading.
  • Ability to multi-task and manage time.
  • Flexibility and dedication to work towards time-sensitive deadlines.
  • Adept with Microsoft Windows and MS-Office 2010/2013 (specifically with MS-Word, MS-Outlook, and MS-Excel).
  • Expert at deciphering mechanical drawings.
  • Proficiency with AutoCAD 2-D drafting software and/or AutoCAD Inventor software is a plus.

Recommended Experience:

  • Two-to-five years patent prosecution experience.  Receipt of patent application drafting and prosecution mentorship at a law firm or in-house is a plus.
    Previous experience as an engineer and/or scientist is a plus.

Recommended Education:

  • Bachelor’s degree in an engineering discipline.
  • Concentration in mechanical or biomedical engineering or equivalent work experience is preferred.
  • Coursework in and/or understanding of human anatomy is a plus.

Licensing:

  • Registered patent agent at the U.S. Patent and Trademark Office

Physical Demands and Work Environment:

  • The physical demands described here are representative of those that must be met by an employee to successfully perform the essential functions of this job. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.
  • Sitting, standing, and/or walking for up to eight hours per day.
  • Frequently required to lift and/or carry from 1-5 lbs., occasionally 25-30 lbs.
  • Frequently required to push and/or pull from 1-2 lbs., occasionally 10-20 lbs.
  • Routine use of standard office equipment such as computers, phones, photocopiers, filing cabinets, and fax machines.
  • Occasionally required to stoop, kneel, crouch, and crawl.
  • Regularly required to talk and/or hear, see, see color, handle/reach, and perform repetitive motion.
  • Able to occasionally travel commercially.

Contact
To apply, please email eshelp@LSISolutions.com.

Additional Info
Employer Type: Small Corporation