Takara Bio USA, Inc., a small corporation, is seeking a Senior Patent Agent to work in San Jose, CA
Roles and Responsibilities:
- Primary responsibility for managing communications with outside counsel; taking the lead in providing guidance to counsel on the preparation and prosecution of domestic and foreign patent applications so as to best match claims to our products and strategy.
- Works with R&D to assess patentability of new inventions; assist in drafting and reviewing related invention disclosures and drafting provisional patent applications.
- Review and prepare freedom-to-operate opinions on 3rd party IP in collaboration with outside counsel, as necessary. Undertakes proactive reviews, where necessary.
- Responsible for assigning products to relevant licenses for royalty reporting purposes.
- Actively guide senior management in evaluating licensing and business transactions based on review of relevant IP.
- Proposes strategies for developing the Company’s patent portfolio based on strong understanding of the Company’s technologies and those of its competitors.
- Provide periodic training to Company employees regarding the protection of intellectual property.
- Maintain knowledge of relevant laws, regulations or statutes affecting the Company’s intellectual property.
- Proposes IP expenditure budgets, based on agreed strategy. Assist in managing expenses to budget.
- This position may have supervisory responsibilities.A Ph.D. in a life-science discipline required; molecular biology and NGS experience preferred.
- Must be a USPTO registered Patent Agent.
- A minimum of 6 years’ experience preparing and prosecuting patent applications and conducting patentability and freedom-to-operate searches both at a law firm and within a company environment.
- Demonstrated ability to lead IP reviews with key internal stakeholders.
- Ability to suggest strategies for internal IP based on understanding of external IP and company’s technology position in the market.
- Skilled in preparing, filing, and prosecuting domestic and foreign patent applications.
- Strong advocacy skills in connection with patent prosecution.
- Proven ability to handle multiple projects and effectively manage priorities so as to meet tight deadlines.
- Independent and self-motivated, with a strong sense of urgency and ability to drive a project to completion.
- Excellent oral and written communication skills – must be able to communicate clearly both within the organization and externally to drive projects forward.
- Highly effective analytical and problem-solving skills, including excellent attention to detail.
- Collaborative personality with strong interpersonal skills.
- Must be fluent in written and spoken English.
- Proficient in Microsoft Office, including Excel and Word.
Apply online at:
Employer Type: Small Corporation
Job Location: San Jose, CA (hybrid)