Warner Norcross & Judd LLP, a full-service firm of 220 lawyers and one of the Top 20 Midsize law firms in the U.S., seeks patent attorneys for our growing offices in Southfield and Sterling Heights, Michigan (Metro Detroit). We are listed in America’s Greatest Places To Work With A Law Degree. The ideal candidate would possess significant experience (6 years minimum) in order to further develop our practice on the east side of the state. Some book of business and contacts in the Metro Detroit area are required. We are open to all technical backgrounds.
Contact: Interested candidates should send a cover letter, job history, resume and copies of undergraduate and law school transcripts to Cathleen Dubault, Director of Lawyer Recruitment, at cdubault@wnj.com.
Additional Info: Employer Type: Law Firm Job Location: Metro Detroit, Michigan (Southfield or Sterling Heights)
Genentech is seeking a Patent Counsel for its South San Francisco, Calif., headquarters. For more than 30 years, Genentech has been at the forefront of the biotechnology industry, using human genetic information to develop novel medicines for serious and life-threatening diseases. Today, Genentech is among the world’s leading biotech companies, with multiple therapies on the market for cancer and other serious medical conditions. Please take this opportunity to learn about Genentech, where we believe that our employees are our most important asset.
Responsibilities: The applicant will prepare, file and prosecute patent applications with a primary focus on the protection of inventions and patent prosecution relating to large molecule biologics. The individual will maintain a substantial and active prosecution docket of U.S. and foreign patent applications, with interference, reexamination and opposition practice as they may arise with prosecution. He/she will develop in-depth expertise in one or more specific areas of biotherapeutic technology and provide counsel on patent law issues to scientists conducting research in those areas. The position will also involve diligence work, including freedom-to-operate, infringement and validity analyses and licensing support.
Requirements: This position requires a United States law degree with 3-6 years of experience as a patent attorney primarily engaged in active patent prosecution. The applicant must have experience in past two years consisting of at least 75% patent filing and prosecution, either in a Pharma or Biotech corporate setting or in a law firm servicing such clients. Further required is admission to practice before the U.S. Patent and Trademark Office. An advanced degree in Molecular Biology, Immunology or Biochemistry is also required, with a PhD preferred. Technical expertise and/or patent prosecution experience in the areas of immunology and neuroscience are strongly preferred. Experience in handling development and life cycle management of active and complex prosecution portfolios in the biotherapeutics area is desirable.
Genentech is dedicated to fostering an environment that is inclusive and encourages diversity of thought, style, skills and perspective.
Contact: To learn more about our current opportunities, please visit: careers.gene.com and reference Req. #1000029661. Please use “Web – PatentlyO.com” when a "source" is requested. Genentech is an Equal Opportunity Employer.
Additional Info: Employer Type: Large Corporation Job Location: South San Francisco, California
The Intellectual Property Manager will be a member of an interdisciplinary team, working with inventors, attorneys and Metabolix management in concert with Archer Daniels Midland (ADM) the Telles Joint Venture partner. This position will facilitate the translation of technical discoveries into valuable IP rights for the company. As the IP team leader, the IP Manager will drive the capture of inventions, assist in preparation of patent applications, and monitor the intellectual property of the global polymer industry.
Serving as a resource on intellectual property matters for inventors, legal and business groups, the IP Manager will creatively extract the maximum value from new inventions through detailed analysis, knowledge of research data and the prior art in the field. Key responsibilities will be the compilation of relevant data bases, preparation of patent applications, development of competitive data bases and tracking global intellectual property.
Job Responsibilities: • Interact with researchers to capture intellectual property • Interface with internal legal group and external legal firms to drive global patent strategy • Manage database for invention disclosures and inventions • Perform comprehensive literature searches to identify potential prior art • Interface with the R&D and legal departments to prioritize invention disclosures and to identify key inventions for patent protection • Work with the inventors and others to draft patent applications • Develop competitive intelligence process • Perform “freedom to operate” studies for specific product applications • Participate in due diligence with outside counsel and manage outside counsel in the evaluation and defense of patent portfolios and assets. • Assist in drafting nondisclosure, research, license and other agreements involving the use, transfer, or ownership of IP and manage compliance of these agreements
Qualifications: • Industrial experience of 5 – 10 years as IP management in plastics industry • MS. degree polymer science or related field • Legal Degree desirable but not required • Excellent writing, analytical and communication skills • Organized, independent, detailed oriented, capable of working under pressure and on multiple tasks, with demonstrated ability to meet deadlines • Enthusiastic and demonstrated ability to work well in a team environment. • Solid understanding of the application of scientific IP to achieving business objectives • Proven knowledge base in polymer technology and industry • Familiarity with patent law and practice • Ability to search patent literature • Good interpersonal and negotiating skills • Demonstrated skills in conflict management and the ability to resolve issues • Excellent networking skills
Travel: Requires tavel between Lowell and Cambridge Metabolix locations along with domestic travel
Report: Reports to Director of Product Development
Vestas Technology R&D Americas, Inc. is seeking a patent attorney for its Houston office. The headquarters for Vestas Technology R&D is located in Houston, Texas with research offices in Boston, Massachusetts and Madison, Wisconsin. The Houston office is currently being staffed to support Vestas research efforts within the wind technology areas of structural mechanics, electrical machines and power conversion, control systems, advanced materials and aerodynamics.
Reporting Relationship: The position has a dual reporting responsibility to the Vice President of Vestas Technology R&D Americas, Inc. in Houston and to the IPR Director for Global Research in Technology R&D in Arhus, Denmark.
Department: Together with Vestas’ Corporate Legal department, the Intellectual Property Rights (IPR) Department is responsible for all IP activities involving the Headquarters Office, Business Units and Technology R&D sites globally. This includes transforming inventions into relevant patent protection, handling of third party rights, advising on IPR related issues and participating in contract negotiations related to IPR issues.
The department operates on a worldwide scale with a presence in Singapore, India, Denmark, UK and now the US. The department, led from Denmark, is part of Vestas’ global Technology R&D department.
The selected candidate will be the first IP attorney in the IPR Department to be based at Vestas Technology R&D Americas, Inc. in Houston.
Responsibilities & Tasks: Your responsibilities and tasks will include but not be limited to: • Invention harvesting throughout Vestas Technology R&D Americas, Inc. • Drafting of patent applications. • Patent prosecution. • Assessment and advice on third party rights. • Conducting interviews at the USPTO. • Providing support in relation to patent related lawsuits. • Actively participate in IP related contractual negotiations. • Managing relationships with outside counsel on a case-by-case basis. Educational Background & Minimum Requirements: • Candidate must be admitted to act before the US Patent and Trademark Office. • Candidate must possess Doctor of Jurisprudence (J.D.) Degree. • Candidate must have 3 to 7 years of IP experience from industry or private practice. • Candidate also must possess a BSEE, BSAE or Physics Degree. • Candidate must have excellent communication skills, be proactive and driven to obtain results. What We Offer: This is an outstanding opportunity to be in an industry where your decisions will have an impact on tomorrow’s world. Vestas offers a demanding, yet rewarding- position that will challenge you professionally. On a personnel level, you will be challenged to engage and communicate with colleagues on all levels. IP involves people from the shop floor to top management and has global impact. At Vestas, personal initiative is very much appreciated. You will be part of an organization where communication with co-workers is informal and effective, both positive and supportive, and the work ethic is very goal-oriented.
Contact: Please submit your confidential resume to windrdjobs@vestas.com. Please include the job title in your subject line. Following receipt of your resume, please allow five business days for review and follow-up.
The primary work location is at our new Vestas Technology R&D Americas Headquarters which is located at 1111 Bagby Street, Suite 2100, Houston, Texas, 77002.
Vestas is an equal opportunity employer.
Additional Info: Employer Type: Large Corporation Job Location: Houston, Texas
Vestas offers you challenging, global opportunities for career growth. As the world leader in modern energy, our wind turbines reduce CO² emissions by 40 million tons per year. We are more than 20,000 employees representing 56 nationalities and we are eager to welcome new colleagues. Care to join us?
Reporting to the General Counsel, the Patent Litigation Counsel will assist with the day-to-day management of patent litigation, currently pending in 4 jurisdictions (U.S. District Court (2); ITC; Canadian Federal Court), and the US Patent & Trademark Office.
This is a significant opportunity for a junior to mid level lawyer to have real-life, hands-on experience with substantial litigation. Further information on the actions may be found at www.Desire2Learn.com/patentinfo. The position will begin as a contract position (minimum 1 year, maximum 2), but may develop into full-time employment for the right candidate.
Main Duties: • Coordinate legal research with Canadian & US outside counsel • Review filings • Assist in obtaining information for litigation • Assist with reexamination filings • Assist with drafting discovery responses • Assist with developing overall strategy
Work Experience Recommendations: • Minimum of 2 years experience in patent litigation and/or patent prosecution • Excellent oral and written communication skills • Cross border experience helpful, but not required • Licensed to practice in the United States or Canada • USPTO registration helpful, but not required • NAFTA eligibility (US/Canadian/Mexican citizen)
Education Recommendations: • Law degree from nationally-recognized, ABA-accredited school • Excellent academic credentials; journal experience preferred • Undergraduate degree or equivalent experience in technology-related field
This is your opportunity to make a big impact in the area of next-generation eLearning applications! Candidates that have the combination of skills and abilities as outlined are invited to submit their qualifications in confidence today. Contact: Please apply online at www.Desire2Learn.com/Careers.
We thank all applicants in advance for their interest. To make the best use of your time and ours, only those applicants whose profiles closely match our requirements will be contacted directly. Additional Info: Employer Type: Small Corporation Job Location: Kitchener, Ontario
The Global IP Group consists of patent law firms in the United States, Germany, Korea, China and Japan. We are currently seeking several licensed U.S. patent attorneys/agents with one to three years of patent prosecution experience or former patent examiners with at least one year of experience working at the USPTO to help the Global IP Group expand its U.S. practice in Osaka, Japan. This position offers the perfect opportunity to learn about Japanese IP practice and to work directly with major Japanese corporations.
Candidates must possess a bachelor’s degree in physics or engineering (preferably electrical or mechanical engineering). However, other disciplines will be considered along with related work experiences. Applicants are expected to have strong writing skills in English and knowledge of current rules and regulations for successfully practicing before the USPTO.
U.S. citizenship is required, since candidates will need to be able to keep their registration to practice before the USPTO while living abroad. No Japanese language skills are required, but candidates are advised to learn enough Japanese to function comfortably in society. The salary is commensurate with experience. Standard benefits and reasonable relocation expense reimbursement will be provided for moving from the U.S. to Japan.
Contact: Interested applicants should contact Yoshio Miyagawa at YMiyagawa@giplaw.com.
Additional Info: Employer Type: Law Firm Job Location: Osaka, Japan
The Intellectual Property Practice Group in the Seattle office of Davis Wright Tremaine is seeking an attorney with a minimum of three years experience in litigating patent and other intellectual property matters. The position will involve all phases of litigation of patent infringement cases, as well as related intellectual property issues. Technical background and admission to practice before the USPTO desirable.
Contact: Please send resume, a copy of your law school transcript, and brief writing sample to Kathleen Shaw, Davis Wright Tremaine LLP, 1201 Third Avenue, Suite 2200, Seattle, WA 98101-3045, or email your application materials to kathleenshaw@dwt.com. No submissions from recruiters please! Additional Info: Employer Type: Law Firm Job Location: Seattle, Washington
AstraZeneca is seeking a Senior Patent Attorney – Neuroscience.
In this position, you will be responsible for global intellectual property matters in Neuroscience. The selected candidate will create and maintain global patent portfolios for Research, Development and Sales projects, perform contract review and due diligence on research and licensing opportunities, and take an active Intellectual Property role in project teams from early development through patent expiration.
Qualifications: • BS/MS in Organic Chemistry and JD required; PhD in Organic Chemistry preferred • 7+ years of patent experience • Background in organic/medicinal chemistry • Significant experience preparing and prosecuting small molecule patent applications • Global patent experience in the pharmaceutical industry preferred
Contact: At AstraZeneca, we put people first. Whether it’s the patients we help or the employees who make everything we do possible.
Additional Info: Employer Type: Large Corporation Job Location: Wilmington, Delaware
I want to advance my career.
You can at AstraZeneca. AstraZeneca is a major international healthcare business engaged in the research, development, manufacture and marketing of prescription pharmaceuticals and the supply of healthcare services. But we’re more than one of the world’s leading pharmaceutical companies. At AstraZeneca, we’re proud to have a unique workplace culture that inspires innovation and collaboration. Here, employees are empowered to express diverse perspectives - and are made to feel valued, energized and rewarded for their ideas and creativity.
AstraZeneca is seeking a Senior Patent Attorney – Oncology and Infection.
In this position, you will be responsible for global intellectual property matters in Oncology and Infection. The selected candidate will create and maintain global patent portfolios for Research, Development and Sales projects, perform contract review and due diligence on research and licensing opportunities, and take an active Intellectual Property role in project teams from early development through patent expiration.
Qualifications: • BS/MS in Organic Chemistry and JD required; PhD in Organic Chemistry preferred • 7+ years of patent experience • Background in organic/medicinal chemistry • Significant experience preparing and prosecuting small molecule patent applications • Global patent experience in the pharmaceutical industry preferred
Contact: At AstraZeneca, we put people first. Whether it’s the patients we help or the employees who make everything we do possible.
Additional Info: Employer Type: Large Corporation Job Location: Boston, Massachusetts
I want to advance my career.
You can at AstraZeneca. AstraZeneca is a major international healthcare business engaged in the research, development, manufacture and marketing of prescription pharmaceuticals and the supply of healthcare services. But we’re more than one of the world’s leading pharmaceutical companies. At AstraZeneca, we’re proud to have a unique workplace culture that inspires innovation and collaboration. Here, employees are empowered to express diverse perspectives - and are made to feel valued, energized and rewarded for their ideas and creativity.
AstraZeneca is seeking a Principal Patent Attorney.
In this position, you will be responsible for global intellectual property matters in Neuroscience. The selected candidate will create and maintain global patent portfolios for Research, Development and Sales, counsel clients on patent law and practice, perform contract review and due diligence on licensing opportunities, and manage outside counsel.
Qualifications: • BS/MS in Organic Chemistry required; PhD in Organic Chemistry preferred • JD (US); Qualified EPA (Europe) • 10+ years of patent experience or 5+ years of post-qualification experience (Europe) • Background in organic/medicinal chemistry • Highly experienced in US and European Patent Law and Litigation matters • Significant experience preparing and prosecuting small molecule patent applications within or for the pharmaceutical industry • Global patent experience in the pharmaceutical industry preferred
Contact: At AstraZeneca, we put people first. Whether it’s the patients we help or the employees who make everything we do possible.
Additional Info: Employer Type: Large Corporation Job Location: Wilmington, Delaware
I want to advance my career.
You can at AstraZeneca. AstraZeneca is a major international healthcare business engaged in the research, development, manufacture and marketing of prescription pharmaceuticals and the supply of healthcare services. But we’re more than one of the world’s leading pharmaceutical companies. At AstraZeneca, we’re proud to have a unique workplace culture that inspires innovation and collaboration. Here, employees are empowered to express diverse perspectives - and are made to feel valued, energized and rewarded for their ideas and creativity.
About LELG: • We are a four-lawyer IP boutique law firm located in Richmond, Virginia. Our practice includes patents, trademarks, copyrights and licensing. Two of our attorneys specialize in patent matters. • LELG has an extensive technology infrastructure and extensive IP legal resources. • Our offices are in the heart of downtown Richmond in Three James Center, overlooking the James River. We have a modern YMCA in our building and are in the middle of a great restaurant district. • LELG is recommended by Chambers USA and holds a Martindale AV rating. John Farmer is listed in Best Lawyers in America. • Find out a lot more at www.LeadingEdgeLaw.com.
About the Position: • We are seeking an experienced patent attorney to join our firm. This person must have at least four years experience in patent prosecution and counseling. • The candidate must have experience in patent prosecution of computer technology inventions. We strongly prefer that the candidate have either a degree in electrical engineering or computer science. • The primary purpose of this hire is to replace one of our patent attorneys, who plans to retire soon. Specifically, we want to find an attorney who can take primary responsibility for our substantial patent-prosecution relationship with a large, publicly-traded patent client. • We are open to discussing various work schedules and compensation models. Yet, with great success, we have used a model where one earns a substantial percentage of one’s collected productivity plus a percentage of one’s collected origination. • This model pays partner-level percentages of productivity and origination without the lawyer having to make a capital contribution. • It eliminates the need for a billable hour goal and gives you work flexibility. • We take and keep only clients who pay on time, so working on a collected fees basis has worked fine. • A candidate must have each of these attributes to be considered: • At least four years of patent prosecution experience in a reputable legal environment, • A reputation for doing high-quality work and for staying abreast of relevant IP legal developments, • Solid educational credentials, • Good writing and client-counseling ability, and • A friendly and kind personality. • While not required, it would be a bonus for a candidate to have these attributes: • Experience and interest in trademarks, copyrights and licensing, and • Exposure to intellectual property litigation.
The USPTO has released a press release indicating that PTO Director Kappos has nominated "longtime USPTO executive Robert ("Bob") Stoll" for a five year term as Commissioner for Patents and has appointed Margaret ("Peggy") Focarino as Deputy Commissioner for Patents. It is the duty of Gary Locke (Secretary of Commerce) to actually appoint the Commissioner. 35 U.S.C. ? 3. The press release indicates that Secretary Locke has already "expressed support" for the nomination.
"Bob brings to this position a rare expertise in patent policy and practice, as well as a strong command of the inner-workings of the USPTO and the federal government," Kappos said. "Working hand-in-hand with Peggy, who has shown incredible skill in Patents management and operations, I know they will meet the formidable challenges facing the Patent organization, including the need to drastically reduce pendency, improve quality and boost efficiency, all while managing costs in a tough budgetary environment."
For his part, Secretary Locke again indicated his focus on patent prosecution pendency: "I have directed the USTPO to pursue an aggressive agenda to significantly reduce the time it takes to process patent applications. The length of time it takes causes uncertainty for inventors and entrepreneurs, stifles innovation and impedes our economic recovery."
About Bob Stoll: Stoll has been at the PTO for 27 years. Beginning as an examiner and then as a SPE before moving into executive management. He spent time as Director of the PTO's office of enforcement – helping fight counterfeiting and piracy and most recently has been working as "Dean of Training and Education." He has a BS in chemical engineering (Maryland) and a JD (Catholic U). Based on his past work, Stoll might be considered "pro patentee." Notably, he has argued that the US grace period should be extended abroad and has worked to organize private-public cooperative organizations to fight international counterfeiting. Stoll’s wife Suzanne Stoll is COO of the Raben Group lobbying firm and served as Chief of Staff and IP Counsel for Congresman Wexler (D-FL).
About Peggy Focarino: Focarino may be better known to the patent prosecution community than Stoll. She has been at the PTO for 32 years as an examiner, SPE, Tech Center director, and as Deputy Commissioner for Patent Operations. Her new role as Deputy Commissioner for Patents takes one word from her title, but it is unclear whether this will practically change her role. Rather, the new title may be more of an olive branch offered by Director Kappos since Focarino has been serving as acting Commissioner of Patents (not deputy) since January 2009. With the departure of John Doll, Focarino will clearly be the PTO executive with the most background and experience in PTO operations.
About John Doll: The Press release also indicates that John Doll is retiring. John Served as Acting Director of the PTO since January 2009 – the capstone of his 35 year career at the PTO. Congratulations to John Doll! Although I do not know his plans, I suspect that he could find a solid law firm job to take advantage of his extensive understanding of the US patent prosecution system.
Deputy Director Still Unknown: Director Kappos has not yet released his choice for the Deputy Director of the PTO. Like the Commissioner of Patents, the PTO director nominates but the Commerce Secretary has ultimate power to appoint. I expect that the Deputy Director will be someone currently outside of the PTO but inside the beltway.
World Research Group, a Patently-O sponsor, is still offering a $300 discount to our readers on its upcoming TechNets Patents Forum (use code: EAG476). The event will be held Nov. 5-6 in New York and will cover topics including patentable subject matter, legislative reform, cloud applications, the Bilski case, and responses to doing more with less in today's challenging economic environment. Register online or call them and mention Patently-O.
A small technology company is seeking a patent professional to draft and prosecute patent applications, mainly in the electrical and software fields.
The ideal candidate will be able to: • take a short description of an idea and draft a clear, thorough, fully-enabled patent application; • provide inventive contributions and/or ideas of his/her own; • interact with and motivate our inventors; and • implement and follow progressive and unique approaches to patent prosecution and strategy.
Contact: Please send a brief statement summarizing your education, work experience, and interest in IP, along with a CV, to Mike Smith at michael.smith@exbiblio.com.
Additional Info: Employer Type: Small Corporation Job Location: Seattle, Washington
In a recent e-mail to patent examiners, new USPTO Director Kappos focused on shifting examiners away from the mindset that rejection equals quality toward a focus on ensuring that patentable claims issue and that unpatentable claims fall.
One key is to expeditiously identify and resolve issues of patentability—that is getting efficiently to the issues that matter to patentability in each case, and working with applicants to find the patentable subject matter and get it clearly expressed in claims that can be allowed. The examiner and the applicant share the responsibility for the success of this process.
On the subject of quality, there has been speculation in the IP community that examiners are being encouraged to reject applications because a lower allowance rate equals higher quality. Let's be clear: patent quality does not equal rejection. In some cases this requires us to reject all the claims when no patentable subject matter has been presented. It is our duty to be candid with the applicant and protect the interests of the public. In other cases this means granting broad claims when they present allowable subject matter. In all cases it means engaging with the applicant to get to the real issues efficiently—what we all know as compact prosecution.
When a claimed invention meets all patentability requirements, the application should be allowed expeditiously. ... [B]y engaging with applicants early on, we certainly can get to the point more quickly, and efficiently allow those claims that are entitled to patent protection.
Invention Law Group, PLLC is seeking a Patent Attorney for its Bellevue Office. We are looking for an individual who loves fast-paced business action, is detail-oriented, independently motivated, and has the confidence and ability to interact with clients and co-workers in a professional, approachable, and positive manner.
Responsibilities: • Working closely with business managers and senior executives, the Senior Patent Attorney will provide leadership and subject matter expertise primarily in the patent licensing area and particularly to a specific set of companies. • Direct the creation of materials to be shared with potential licensees. • Managing patent licensing efforts including asserting patents. • Conduct patent claims and patent infringement analysis, including file history review. • Provide input into portfolio development for future licensing and enforcement. • Provide guidance to prosecution (reissues, reexaminations, continuations, foreign filing, etc). • Provide direction and effectively manage relationships with multiple outside counsel in all of the above. • Play appropriate role (which could vary from support role to lead negotiator to sole attorney depending on complexity of the transaction and relationships) in drafting and negotiating complex contracts and other materials to be shared with investors.
Qualifications: A qualified candidate will be a registered patent attorney, with strong patent licensing experience, a broad software, semiconductors, electronics, information technology, computer hardware, networking and wireless background and possess the following: • 10+ years patent law experience with 2+ years recent experience in patent licensing. • Broad technical knowledge, familiarity with all relevant technologies. • Excellent negotiation and contract drafting skills. • Expert knowledge of principles, practices, case law and state of the art in patent licensing. • Experience in managing work groups of up to 5 people. • Experience managing outside counsel. • Ability to plan, organize and direct legal staff. • Ability to communicate information effectively, both orally and in writing. • Ability to work well with others and to quickly assimilate and understand information (including highly technical information). • Ability to make sound business decisions. • Some work experience in an engineering role is preferred. • J.D., Law degree (preferably from a strong IP program) is required. • Registration before the U.S. Patent & Trademark Office and license to practice in at least one state (preferably California) is required. • Bachelor’s degree (preferably graduate degree) in Electrical Engineering, Computer Science, or some other very closely related field is required.
Contact: Interested applicants should apply by sending their resume to: jobs@intven.com.
Invention Law Group, PLLC is an equal opportunity employer.
Additional Info: Employer Type: Large Corporation Job Location: Bellevue, Washington
Intellectual Ventures (“IV”) is a privately-held, invention investment company based in Bellevue, Washington. Their business model centers on creating, acquiring and licensing pure invention in a variety of technology areas.
The USPTO has issued a set of interim examination guidelines for determining whether a claim is properly directed to patentable subject matter under 35 U.S.C. ? 101, relevant Supreme Court precedent, and Bilski. The instructions begin with a realization that the area is in flux and that more permanent guidelines will be established once the Supreme Court rules on Bilski v. Kappos. In addition, these are guidelines rather than rules or laws. Thus, an examiner's failure to follow the guidelines is "neither appealable nor petitionable."
The guidelines appear to do a good job of synthesizing the highly confusing area of law into a straightforward algorithm. The problem is that next spring the Supreme Court is almost sure to reject the Federal Circuit's Machine-or-Transformation test. At that point, all of the examiner time and applicant money focusing on this "threshold issue" will have been wasted. I understand that the business of the PTO must continue even in the face of potential policy shifts. However, I would have suggested that examination of Section 101 eligibility be put on a back-burner - especially in light of the fact that most questionable subject matter cases will also fail the tests of obviousness, enablement, and indefiniteness.
The guidelines bear the signature of Drew Hirshfeld, Acting Deputy Commissioner for Patent Examination Policy. The PTO recently posted a notice looking to permanently fill this extremely important position.
Invention Law Group, PLLC is seeking a Patent Attorney for its Portfolio Administration group. We are looking for an individual who loves fast-paced business action, is detail-oriented, independently motivated, and has the confidence and ability to interact with clients and co-workers in a professional, approachable, and positive manner.
Responsibilities: • Assisting in strategic management of existing portfolio of issued patents and on-going prosecution of pending cases • Evaluating potential licensing value, technical merit, and patentability/validity of invention disclosures, patent applications and patents • Reviewing and evaluating the quality, cost-effectiveness and scope of work performed by outside patent counsel • Assisting in developing and implementing portfolio analysis and tracking tools to build infrastructure and enable efficient scaling of work for rapidly growing portfolio • Managing docketing team to ensure accurate entry of patent information • Managing staff of Paralegals and Patent Assistants responsible for researching and evaluating patent file histories and title assignments for patent due diligence
Qualifications: • J.D. degree from high-quality, ABA accredited law school • Undergraduate degree in EE, Physics, or Computer Science • Admission to Washington or other state bar • Admission to practice before US Patent and Trademark Office • At least four years experience as practicing patent attorney, with primary emphasis on patent prosecution in Wireless • Ability to lead and manage a fast moving dynamic team • Excellent analytical, communication and organizational skills a must • Due diligence investigations of patent portfolios • Foreign prosecution • In-house experience or other experience managing outside counsel
Contact: Interested applicants should apply by sending their resume to: jobs@intven.com.
Invention Law Group, PLLC is an equal opportunity employer.
Additional Info: Employer Type: Large Corporation Job Location: Bellevue, Washington
Intellectual Ventures (“IV”) is a privately-held, invention investment company based in Bellevue, Washington. Their business model centers on creating, acquiring and licensing pure invention in a variety of technology areas.
Invention Law Group, PLLC is looking for a Senior Patent Attorney-Licensing to work in the Growth Business Unit in Bellevue, Washington. We are looking for an individual who loves fast-paced business action, is detail-oriented, independently motivated, and has the confidence and ability to interact with clients and co-workers in a professional, approachable, and positive manner.
Responsibilities: • Working closely with the General Manager and senior executives, the Senior Patent Attorney will provide leadership and subject matter expertise primarily in the patent licensing area to the Growth Business Unit. Specifically, the Senior Patent Attorney is responsible for: • Guiding the investigation, identification and development of new IP product portfolios for the benefit of our current and future investors and customers. • Partnering with Licensing Executives to develop licensing strategy within the Growth business unit. Specifically around patent use, patent infringement and license negotiation. • Personally develop patent claim product mappings and file history analysis. • Personally conduct patent claim and patent application and benefit analysis and be able to train and develop an engineering staff to support these efforts. • Personally conduct patent claim and patent infringement analysis and be able to train and develop an engineering staff to support these efforts. • Personally conduct an analysis of the intellectual property markets pertaining to the new portfolio areas. Specifically litigation patterns, histories and licensing practices. • Assist in negotiation of various outbound patent license agreements. • Provide guidance to prosecution (reissues, reexaminations, continuations, foreign filing, etc). • Provide direction and effectively manage relationships with multiple outside counsel in all of the above. • Play appropriate role (which could vary from support role to lead negotiator to sole attorney depending on complexity of the transaction and relationships) in drafting and negotiating complex contracts
Qualifications: • A qualified candidate will be a registered patent attorney, with strong patent licensing experience, a broad electronics, technology, wireless, optical or biomedical background and possess the following: • 10+ years patent law experience with 2+ years experience in IP licensing (preferably patent licensing) • J.D., Law degree • Registration before the U.S. Patent & Trademark Office and license to practice in at least one state (preferably Washington) is required. • Bachelor’s degree (preferably graduate degree) in Electrical Engineering, Computer Science, Physics or some other very closely related field is required. • Broad technical knowledge, familiarity with relevant technologies • Excellent negotiation and contract drafting skills • Expert knowledge of principles, practices, case law and state of the art in patent licensing • Experience managing outside counsel • Ability to plan, organize and direct legal staff • Experience in managing work groups of up to 5 people • Ability to communicate information effectively, both orally and in writing • Ability to work well with others and to quickly assimilate and understand information (including highly technical information) • Ability to make sound business decisions • Some work experience in an engineering role is preferred
Contact: Interested applicants should apply by sending their resume to: jobs@intven.com.
Invention Law Group, PLLC is an equal opportunity employer.
Additional Info: Employer Type: Large Corporation Job Location: Bellevue, Washington
Intellectual Ventures (“IV”) is a privately-held, invention investment company based in Bellevue, Washington. Their business model centers on creating, acquiring and licensing pure invention in a variety of technology areas.
As part of the Paperwork Reduction Act of 1995 (44 U.S.C. 3506(c)(2)(A)), the USPTO is required to evaluate its methods of collecting information from the public. In a recent Paperwork Act notice & publication, the Office offered the following estimates for reexamination practice.
Response
Estimated Time Response (hours)
Estimated Number of Annual Responses
Total Hours
Request for Ex Parte Reexamination Transmittal Form (PTO/SB/57)
18 minutes
845
254
Request for Ex Parte Reexamination
40 hours
845
33,800
Request for Inter Partes Reexamination Transmittal Form (PTO/SB/58)
18 minutes
380
114
Request for Inter Partes Reexamination
90 hours
380
34,200
Petition to Review Refusal to Grant Ex Parte Reexamination
15 hours
25
375
Petition to Review Refusal to Grant Inter Partes Reexamination
25 hours
9
225
Patent Owner's 37 CFR 1.530 Statement
7 hours
105
735
Third Party Requester's 37 CFR 1.535 Reply
7 hours
60
420
Amendment in Ex Parte or Inter Partes Reexamination
20 hours
1,165
23,300
Third Party Requester's 37 CFR 1.947 Comments in Inter Partes Reexamination
25 hours
300
7,500
Response to Final Rejection in Ex Parte Reexamination
15 hours
320
4,800
Patent Owner's 37 CFR 1.951 Response in Inter Partes Reexamination
25 hours
120
3,000
Third Party Requester's 37 CFR 1.951 Comments in Inter Partes Reexamination
25 hours
95
2,375
Petition to Request Extension of Time in Ex Parte or Inter Partes Reexamination
30 minutes
475
238
Total
5,124
111,336
Are these estimates in the ball park? How many hours are spent preparing a request for ex parte reexamination? Perhaps most importantly - what is missing here from the time spent in reexamination practice? Comments may be submitted to Susan.Fawcett@uspto.gov (Subject: A0651-00XX Patent Reexaminations comment). Notice at 74 FR 39916.
Assuming that the total -- 111,336 hours -- represent the entire amount of attorney time spent on reexaminations. Those hours are the equivalent of about 60 full time patent attorneys.
a full-service firm of 220 lawyers and one of the Top 20 Midsize law firms in the U.S., seeks patent attorneys for our growing offices in Southfield and Sterling Heights, Michigan (Metro Detroit). We are listed in America’s Greatest Places To Work With A Law Degree. The ideal candidate would possess significant experience (6 years minimum) in order to further develop our practice on the east side of the state. Some book of business and contacts in the Metro Detroit area are required. We are open to all technical backgrounds.
