NYU Grossman School of Medicine is seeking a patent agent to work in New York City. The Patent Agent manages activities related to the disclosure and protection of new inventions in chemistry and life sciences and the transfer of technology from the Medical Center and the University to the marketplace. This includes assessing the patentability of new invention disclosures from faculty, identifying relevant prior art, analyzing substantive correspondence such as office actions from the US Patent and Trademark Office, and creating and maintaining detailed intellectual property records.
- Evaluate invention disclosures from faculty for patentability and copyright protection. Conduct prior art searches and summarize results in table and/or paragraph formats. Work with the Director, Intellectual Property, Senior Director, Life Sciences Technology Transfer, outside counsel, and inventor(s) to evaluate patentability of inventions.
- Assist Director, Intellectual Property, Senior Director, Life Sciences Technology Transfer, and outside counsel in preparation and prosecution of patent applications, to ensure adequate claim scope to cover commercially important aspects of invention are protected.
- Monitor and manage patent prosecution deadlines. Ensure that responses to communications and office actions from patent offices (US and foreign) are timely met without extensions.
- Analyze and summarize office action rejections including any cited prior art (includes proposing arguments and/or claim amendments) and communicate to inventors, director, intellectual property, and senior director, life sciences technology transfer
- Monitor deadlines and generate reports for patent maintenance fees and annuities and work with Office of Technology Opportunities and Ventures (TOV) business managers to ensure fees are paid timely. Maintain NYU online account for patent maintenance and annuity fees.
- Prepare formal patent documents such as assignments. Prepare reports and presentations as needed by director, intellectual property.
- Prepare and file federal copyright registrations.
- Meet with researchers to learn of their research, make them aware of intellectual property considerations, and encourage invention disclosures.
- Create and maintain claim charts within a particular patent case as well as within patent families. Create and maintain patent family trees.
- Create and maintain detailed notes for each patent case in electronic database including data entry.
- Research prosecution matters on PAIR (and also foreign patent databases) and internal intellectual property management database
- Ensure compliance with government reporting requirements for use of federal funds supporting research that has given rise to inventions and/or creations including data entry to iEdison database
- Remain abreast of changes to USPTO rules, current patent prosecution issues and trends.
- Meet with researchers to learn of their research, make them aware of intellectual
property considerations, and encourage invention disclosures
- Adhere to medical center policies and behavioral standards
- To qualify you must have a Ph.D. degree in chemistry
- Must be Registered U.S. Patent and Trademark Office Patent Agent (has taken and passed the patent bar examination and has good working understanding of patent process and procedures).
- Experience with patenting process and patent prosecution in both chemistry and life sciences (e.g., pharmacology, biochemistry, biology, cell biology)
- Excellent administrative, negotiating, interpersonal and communication skills necessary
- Ability to work effectively with academic scientists to achieve consensus and promote good long-term relationships
- Ability to work with tight deadlines and manage own caseload
- Outstanding attention to detail and strong prioritization skills
- Excellent written and oral communication skills
- Drive and motivation to learn new material
- Flexible, adaptable and efficient work practices
- Advanced level of skill with Microsoft products such as Word, Excel, and Powerpoint and also online research tools
- A technical writing sample is required.
- Strong technical background in both chemistry and the life sciences (e.g., pharmacology, biochemistry, biology, cell biology) with excellent academic credentials; post-doctoral research training or research experience is preferred.
Employer Type: Law Firm
Job Location: New York City, NY