Essential Functions:

• Manage team of attorneys/agents/paralegals working on intellectual property matters in Physical Sciences.
• Coordinate the Physical Science intellectual property team efforts in conjunction/cooperation with Chief Patent Counsel, including managing workload assignments of Physical Science team members while maintaining responsibilities for personally drafting, filing, and prosecuting patent applications.
• Perform deep diligence on key Purdue intellectual property portfolios and develop long-term protection strategies to maximize the value to PRF.
• Work closely with the Office of Technology Commercialization (OTC) business development managers, licensees, and outside counsel to understand the intellectual property terms and conditions in license agreements and maximize value to PRF.
• Provide the OTC business development team with potential licensees based on own expertise, knowledge, and prior art searches.
• Perform prompt and competent analyses of intellectual property protection and strategies to enable timely technology transfer of Purdue intellectual property in physical sciences and other areas as needed or assigned.

Additional Responsibilities:

• Work cooperatively with Purdue inventors to provide them with intellectual property education and expertise.
• Work closely with OTC business development licensing staff to evaluate technology-based innovations for appropriate intellectual property protection and commercial potential.
• Draft patent applications and present applications to the US Patent and Trademark 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 coordination, management and accounting for budget expenditures associated with all assigned project-related activities.
• 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 and provide learning opportunities and education to OTC.

Knowledge, Skills and Abilities:

• Registered with US Patent and Trademark Office.
• Member of Indiana or a reciprocating state Bar in good standing.
• Strong diplomatic skills required.
• Extensive hands-on patent prosecution experience required.
• 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 and as a team leader.
• 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 required; advanced degree (MS, PhD) in Electrical Engineering, Mechanical Engineering or Materials Science or a related field preferred.
• 5-10 years of direct patent drafting and prosecution experience before US Patent and Trademark Office in the physical or computer arts.
• JD required.

If you are interested in applying, please click here to begin the process: https://www.applyatprf.com. The application deadline is Monday, September 20, 2021. Include a cover letter and resume with your submission.

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