JOB SUMMARY: Supports Executive Team, Discovery, Technology, and Engineering as needed. Manages the Intellectual Property Team and executes primary and strategic intellectual property (IP) activities. Activities will be of a scheduled and unscheduled nature.

ESSENTIAL FUNCTIONS:

• Enhance, maintain, and advise on Company intellectual property portfolio, including patents (utility and design), trademarks, and trade secrets.
• Develop and apply a process to ensure that all patent, trademark, and trade secret aspects of intellectual property are being addressed in a strategic manner that is consistent with and based on the Company’s business plans and goals as communicated by the Company’s President, Vice Presidents and Directors;
• Develop and maintain a coordinated IP and product roadmap from concepts through released products, while executing IP milestones in sync with appropriate events in a planned and controlled fashion.
• Efficiently and effectively manage, develop, and train all employees assigned to the IP group, including, but not limited to patent drafts people, paralegals, patent administrators, and other administrative staff.
• Actively research and identify intellectual property potential for new Company technologies.
• Perform due diligence and patent validity and infringement analyses on existing Company patents, and patents filed or acquired by the Company.
• Recommend appropriate path in regard to patentability, claims, prosecution, and amendments.
• Efficiently research and analyze prior art.
• Develop an IP landscape for the technology areas important to the Company. Identify and contribute towards possible areas for innovation opportunity.
• Write abstracts, brief and detailed descriptions, summaries, and develop claims in accordance with best patent practices which are consistent with current patent case law and rules.
• Advise pertinent staff regarding associated rules and regulations to adhere to in filing proceedings.
• Prepare and file U.S. patent applications with the U.S. Patent and Trademark Office (USPTO).
• Prepare and file international Patent Cooperation Treaty (PCT) patent applications with the U.S. Receiving Office.
• Coordinate foreign patent filings and prosecution with foreign agents as required.
• Screen and select foreign IP agents for working with the Company.
• Communicate with the USPTO and relevant examiners and boards.
• Analyze USPTO and PCT office actions and prepare & file appropriate
• Handle all Company patent application appeals in front of the USPTO Patent Trial and Appeal Board.
• Advise on and coordinate all Company Post Grant Opposition Proceedings.
• Debate with USPTO examiners to withdraw rejections of applications for patent claims.
• Recommend and develop software and tools required to achieve goals.
• Perform “right-to-use” patent clearance searches as needed.
• Develop efficient processes and systems to facilitate intellectual property filing
• Set up and coordinate the maintenance of an intellectual property database, including status of active patents or pending applications, office actions, maintenance milestones, and impending fees.
• Develop, maintain, and effectively share statistics on filed patent and trademark applications as well as issued patents and trademarks.
• Coordinate workflow with internal and external service providers.
• Organize and prioritize numerous tasks and complete them under time constraints in an efficient and cost-effective manner.
• Interact professionally with clients, lawyers, and employees at all levels and provide information with ordinary courtesy and tact while safeguarding confidentiality.
• Recommend best practices and implement procedures to ensure confidentiality.
• Recommend best practices and implement procedures to maintain consistency and an active protective posture in regard to Company patents and trademarks.
• Directly influence IP policy, including non-disclosure and confidentiality requirements, documents, and procedures.
• Regularly update knowledge of pertinent USPTO, PCT, and international rules and case law to keep skills up to date.

EDUCATION & EXPERIENCE:

• Bachelor’s degree in an engineering or scientific discipline.
• Registered patent practitioner with the USPTO, having a minimum of 10 years of patent prosecution experience.
• Successfully practiced patent law at either a law firm or in-house at a technology company.
• Experienced at successfully interfacing with business executives and incorporating business aspects into IP filings and plans.
• Experienced and successful team manager.
• Experienced at successfully advising business executives.
• Practical engineering experience is a plus.
• Concentration in mechanical or biomedical engineering preferred.
• Coursework and/or understanding of human anatomy is a plus.

KNOWLEDGE, SKILLS & ABILITIES:

• Thorough knowledge of USPTO and PCT rules, guidelines, and processes.
• Thorough knowledge of International and Regional filing timelines and rules necessary to work effectively with foreign counsel.
• Demonstrated ability to successfully plan and manage activities for an IP team, including docketing, administrative, and technical/CAD related functions.
• Proficient project manager.
• Team oriented facilitator/mentor/worker.
• Demonstrated technical proficiency.
• Ability to quickly identify and understand novel mechanisms and/or processes.
• Excellent communication skills (verbal and written).
• Excellent persuasion and debate skills.
• Excellent multi-tasking ability.
• Customer-focused, goal-oriented self-starter.
• Advanced knowledge of computers and software (e.g. MS-Word, MS-Excel, MS-Access).
• Expert at deciphering mechanical drawings.
• Proficiency with AutoCAD 2-D drafting software is a plus.

Apply online at:
https://www.lsisolutions.com/Careers

Attach Cover Letter (Optional)

Additional Info
Employer Type: Other
Job Location: Victor, NY