Musco Sports Lighting is searching for a Patent Agent who will be responsible for creation and implementation of intellectual property protection strategies to ensure maximum value of company’s intellectual property.
Principal Duties and Responsibilities:
- Identify patentable ideas and pursue patent rights by drafting patent applications that support the desired patent coverage and meet the requirements of U.S. and foreign patent law.
- Prepare and file official documents required by U.S. Patent Office for patent matters.
- Manage all activities relating IP projects to ensure appropriate actions are carried out in timely manner and prior to deadlines; maintain accurate records.
- Advise team members on patent rules relating to public testing or disclosure, commercial use, and offer for sale.
- Evaluate office action from patent examiner and provide written response that advances application towards allowance while maintaining company’s patent objectives.
- Conduct research to: identify potential prior art, analyze state of the art for technology areas, determine freedom to operate for identified designs, perform competitor analysis, or analyze potential infringement.
- Lead efforts to protect confidential information and patent filing rights through implementation of best practices; assist with education of IP to impacted team members and affiliates; develop department standard operating procedures.
Strategize on IP protection of company’s products and services, provide input to R&D Team and Sales/Marketing Team on strength and opportunities of IP protection. - Advise team members on IP matters in contract language.
Interdepartmental Integration This position requires interaction with various company departments.
Research & Development (R&D)
- Work with inventors to develop written specifications for patent applications including any research on existing patents or published work to assist with decision making.
- Work with lead technical advisors to implement strategy for company’s IP protection.
- Advise team of patent rules.
Product Development Engineering (PDE)
- Work with inventors to develop written specifications for patent applications including any research on existing patents or published work to assist with decision making.
- External Customer Integration - This position requires interaction with outside resources and affiliates.
US Patent and Trademark Office
File official documents required by U.S. Patent Office using online system.
Correspond with patent examiners on Musco patent cases.
Patent Attorney Firm
- Coordinate international patent protection efforts with various patent attorneys:
- Provide draft of patent application for filing of international patent protection.
- Provide filing instructions per discussion with manager, coordinate efforts with attorneys to implement strategy for company’s patent filings.
- Provide draft of patent office action response including any technical feedback on patent cases to assist attorney with office response to patent office.
Assist with IP infringement cases or various other IP actions involving outside counsel.
Education & Experience Requirements:
- Minimum BA/BS degree in engineering field.
- Prefer Electrical, Mechanical, Material Science, or Photonics degree.
- Understanding of principles of lighting, electrical, and optic systems.
- Minimum 2 years experience working with intellectual property protection and performing duties of patent agent for US Patent and Trademark Office.
- Understanding of patent protection issues, including: patentability, enablement, novelty, non-obviousness, best mode, first to file, public disclosure, and Americas Invents Act.
- Prior experience as patent writer with demonstrated ability to perform job duties herein.
- Registered as U.S. Patent Agent or ability to achieve certification within 18 months.
Job Specifications:
- Advanced technical understanding of engineering principals, ability to understand technical aspects of inventions relating to lighting, electrical, and optics.
- Ability to understand technical reports and evaluate engineering documentation.
- Advanced knowledge of intellectual property rights and protection methods with desire for continuous learning.
- Strong verbal and written communication skills
- Ability to simplify technical issues in clear, concise, and accurate written descriptions.
- Ability to listen and convey other’s ideas into written description, ability to have technical discussion with inventors.
- Good organizational skills with ability to work on multiple projects, attention to details and accuracy.
- Good project management and leadership skills including ability to work effectively with internal subject matter experts, co-workers, IP management team, inhouse legal staff, and external attorneys.
- Self-motivated with ability to work with limited directions from others.
Proficient with Microsoft Office software: Excel, Word, and PowerPoint. - Understanding and adherence to company culture.
- Knowledge of company products and services.
Authoring of Copyrighted Works:
Any original works of authorship, including photographs, videos, training aids, other works relating to the above job duties will be owned by company.
Any copyrighted work created for company that is not explicitly defined above but would reasonably be considered as within scope of duties shall also be owned by company.
Additional Info
Employer Type: Large Corporation
Job Location: Oskaloosa, IA