Intellectual Property Manager – 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 are seeking an Intellectual Property Manager. This role supports Executive Team, Discovery, Surgical Science, and Engineering as needed. Manages the Intellectual Property Team and executes primary and strategic intellectual property (IP) activities. Activities are of a scheduled and unscheduled nature. Travel may be required.

Essential Functions:

  • Enhance, maintain, and advise on Company intellectual property portfolio, including patents (utility and design) and trade secrets;
  • Develop and apply a process to ensure that all patent, and trade secret aspects of intellectual property are being addressed in a strategic manner that is consistent with and based on the Company’s business plans and goals as communicated by the Company’s President and CEO, Vice Presidents and Directors;
  • Develop and maintain a coordinated IP and product roadmap from concepts through released products, while executing IP milestones in sync with appropriate events in a planned and controlled fashion;
  • Efficiently and effectively manage, develop, and train all employees assigned the IP group, including, but not limited to patent drafts people, paralegals, patent administrators, and other administrative staff;
  • Actively research and identify intellectual property potential for new Company technologies;
  • Perform due diligence and patent validity and infringement analyses on existing Company patents, and patents filed or acquired by the Company;
  • Recommend appropriate path regarding patentability, claims, prosecution, and amendments;
  • Efficiently research and analyze prior art;
  • Develop an IP landscape for the technology areas important to the Company. Identify and contribute towards possible areas for innovation opportunity;
  • Write abstracts, brief and detailed descriptions, summaries, and develop claims in accordance with best patent practices which are consistent with current patent case law and rules;
  • Advise pertinent staff regarding associated rules and regulations to adhere to in filing proceedings;
  • Prepare and file U.S. patent applications with the U.S. Patent and Trademark Office (USPTO);
  • Prepare and file international Patent Cooperation Treaty (PCT) patent applications with the U.S. Receiving Office;
  • Coordinate foreign patent filings and prosecution with foreign agents as required;
  • Screen and select foreign IP agents for working with the Company;
  • Communicate with the USPTO and relevant examiners and boards;
  • Analyze USPTO and PCT office actions and prepare & file appropriate responses and amendments to procure high quality and strategic patents;
  • Handle all Company patent application appeals in front of the USPTO Patent Trial and Appeal Board;

Job Description:

  • Advise on and coordinate all Company Post Grant Opposition Proceedings;
  • Debate with USPTO examiners to withdraw rejections of applications for patent claims;
  • Recommend and develop software and tools required to achieve goals;
  • Prepare defensive IP publications as necessary;
  • Perform “right-to-use” patent clearance searches as needed;
  • Develop efficient processes and systems to facilitate intellectual property filing and docket management;
  • Set up and coordinate the maintenance of an intellectual property database, including status of active patents or pending applications, office actions, maintenance milestones, and impending fees;
  • Develop, maintain, and effectively share statistics on filed patent applications as well as issued patents;
  • Coordinate workflow with internal and external service providers;
  • Organize and prioritize numerous tasks and complete them under time constraints 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;
  • Recommend best practices and implement procedures to ensure confidentiality;
  • Recommend best practices and implement procedures to maintain consistency and an active protective posture in regard to Company patents;
  • Directly influence IP policy, including non-disclosure and confidentiality requirements, documents, and procedures;
  • Regularly update knowledge of pertinent USPTO, PCT, and international rules and case law to keep skills up to date;
  • Attend executive and planning meetings as recommended by the President and Directors in order to gain exposure to aspects of the business which will drive IP planning and actions; and
  • Perform other related duties and projects as business needs require at direction of management.

Education and Experience:

  • Registered patent practitioner (patent agent preferred) with the USPTO, having a minimum of ten years of patent prosecution experience;
  • Experienced at successfully interfacing with business executives and incorporating business aspects into IP filings and plans;
  • Experienced at successfully advising business executives;
  • Experienced at successfully leading and mentoring a diverse team;
  • Practical engineering experience is a plus.
  • Bachelor’s degree in an engineering discipline;
  • Concentration in mechanical or biomedical engineering preferred; and
  • Coursework and/or understanding of human anatomy is a plus.

Knowledge, Skills, and Abilities:

  • Thorough knowledge of USPTO and PCT rules, guidelines, and processes;
  • Thorough knowledge of International and Regional filing timelines and rules necessary to work effectively with foreign counsel;
  • Demonstrated ability to successfully plan and manage activities for an IP team, including docketing, administrative, and technical/CAD related functions;• Proficient project manager;
  • Team oriented facilitator/mentor/worker;
  • Demonstrated technical proficiency;
  • Ability to quickly identify and understand novel mechanisms and/or processes;
  • Excellent communication skills (verbal and written);
  • Excellent persuasion and debate skills;
  • Excellent multi-tasking ability;
  • Customer-focused, goal-oriented self-starter
  • Advanced knowledge of computers and software (e.g. MS-Word, MS-Excel, MS-Access);
  • Expert at deciphering mechanical drawings; and
  • Proficiency with AutoCAD 2-D drafting software and/or AutoCAD Inventor is a plus.

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.
  • By providing my electronic signature I can, with or without reasonable accommodation(s), perform the essential functions of this position.

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Additional Info
Employer Type: Small Corporation
Job Location: Victor, New York