Purdue Research Foundation is seeking an Intellectual Property Counsel to work in West Lafayette, IN.
Essential Functions:
- Perform prompt and competent completion of analyses of intellectual property protection and strategies to enable timely technology transfer of Purdue intellectual property in the electrical, computer, software, and mechanical arts.
- Evaluate and implement strategies for the protection of IP in a manner that maximizes commercial and licensing potential.
- Work cooperatively with Purdue inventors and Office of Technology
- Commercialization (OTC) licensing staff to evaluate technology-based innovations for appropriate intellectual property protection.
- Draft patent applications and present applications to US Patent and Trademark Office and copyright registrations to US Copyright Office for the benefit of Purdue.
- Prosecute patent applications with respect to all aspects of patent law, including preparing formal communications and responses to national patent offices, conducting examiner interviews and related prosecution activities for the benefit of Purdue.
- Engage and manage outside counsel on patent prosecution matters including coordinate, manage and account for budget expenditures associated with all assigned project-related activities.
Additional Responsibilities:
- Work cooperatively with Office of Technology Commercialization business development managers in the evaluation of intellectual property landscapes.
- Assist in due diligence of legal matters relating to any matter.
- Represent Purdue and OTC with national organizations, associations and groups related to university commercialization.
- Provide the OTC business development team with expertise and advice on IP licensing.
- Manage outside counsel on litigation matters.
Knowledge, Skills and Abilities:
- Registered with US Patent and Trademark Office.
- Member of Indiana or a reciprocating state Bar in good standing.
- Strong working knowledge of intellectual property transactions including licensing required.
- Knowledge of technology transfer within industry and/or academia required.
- Strong diplomatic skills required.
- Legal contract comprehension and hands-on patent prosecution experience preferred.
- Commitment to higher education and the values of scientific research and discovery for societal benefit.
- Excellent organizational, problem-solving, computer, written/verbal communication skills required.
- Ability to work independently as well as in a team environment.
- Candidate must be comfortable interacting with people from varied disciplines and with managing multiple complex projects.
- Occasional travel required.
Must be self-motivated, enthusiastic, detail-oriented, able to manage/coordinate multiple tasks, and able to work collaboratively and successfully with different sectors, including co-workers, academic scholars, entrepreneurs, and industry executives. - Regular and reliable attendance are requirements of this position.
Education/Experience:
- Bachelor’s degree in Electrical Engineering or a related field.
- JD required.
- 2-4 years of direct patent drafting and prosecution experience before US Patent and Trademark Office in the electrical and computer arts.
- Experience and/or expertise in biomedical, and material science related arts a plus.
If you are interested in applying, please click here to begin the process: https://www.applyatprf.com. The application deadline is Friday, July 9, 2021.
A criminal conviction check and negative controlled substance test are required for employment in this position.
Purdue Research Foundation is an equal opportunity, affirmative action employer. PRF views, evaluates, and treats all persons in all Foundation-related activities solely as individuals on the basis of their own personal abilities, qualifications, and other relevant characteristics. All qualified applicants for employment will receive consideration without regard to race, religion, color, gender, national origin or ancestry, genetic information, marital status, parental status, sexual orientation, gender identity and expression, disability, or status as a veteran.
Additional Info
Employer Type: Non-Profit
Job Location: West Lafayette, IN