LSI Solutions, located in beautiful Victor, New York, is a dynamic and growing medical device company with nearly 400 employees dedicated to advancing minimally invasive therapeutics through research, development, manufacturing, and marketing of minimally invasive surgical instruments.Intellectual Property Manager
JOB SUMMARY: Supports Executive Team, Discovery, Technology, and Engineering as needed. Manages the Intellectual Property Team and executes primary and strategic intellectual property (IP) activities. Activities will be of a scheduled and unscheduled nature.
- Enhance, maintain, and advise on Company intellectual property portfolio, including patents (utility and design), trademarks, and trade secrets.
- Develop and apply a process to ensure that all patent, trademark, 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, 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 to 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 in regard to 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
- Handle all Company patent application appeals in front of the USPTO Patent Trial and Appeal Board.
- 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.
- Perform “right-to-use” patent clearance searches as needed.
- Develop efficient processes and systems to facilitate intellectual property filing
- 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 and trademark applications as well as issued patents and trademarks.
- 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 and trademarks.
- 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.
EDUCATION & EXPERIENCE:
- Bachelor’s degree in an engineering or scientific discipline.
- Registered patent practitioner with the USPTO, having a minimum of 10 years of patent prosecution experience.
- Successfully practiced patent law at either a law firm or in-house at a technology company.
- Experienced at successfully interfacing with business executives and incorporating business aspects into IP filings and plans.
- Experienced and successful team manager.
- Experienced at successfully advising business executives.
- Practical engineering experience is a plus.
- Concentration in mechanical or biomedical engineering preferred.
- Coursework and/or understanding of human anatomy is a plus.
KNOWLEDGE, SKILLS & 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.
- Proficiency with AutoCAD 2-D drafting software is a plus.
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Employer Type: Other
Job Location: Victor, NY