Intellectual Property Associate, Early Mid-Level – Law Firm – New York, NY; San Diego, CA

July 1, 2021- US - Northeast, - US - West, Tech - Biotech, Work - Intellectual Property

Duane Morris is seeking an early mid-level (2-5 year) biotech patent prosecution, opinion and counseling associate, for its New York City/San Diego office. Candidates must be licensed to practice before the USPTO as well as be a registered US Patent Attorney licensed in New York/California, and admission to one or more US Federal Courts is advantageous. The successful candidate will have experience in practicing before the USPTO that is commensurate with the candidate’s years in practice. The candidate, in addition to bar admissions and experience in practicing before the USPTO, must have been awarded a Juris Doctor from an accredited US Law School, and also hold an advanced degree (i.e., PhD), from an accredited institution, in biochemistry, immunology, molecular biology, or microbiology, and an appreciation of organic chemistry and bioinformatics is advantageous. EOE/AA/M/F/D/V

Intellectual Property Patent Agent – Law Firm – Multiple Locations

June 18, 2021- US - Midwest, - US - Northeast, - US - Southwest, - US - West, Tech - Computer Science, Tech - Electrical, Work - Patent Prosecution

Faegre Drinker is actively recruiting an Intellectual Property Patent Agent to join our thriving Intellectual Property practice. This position offers the opportunity to be involved with all aspects of patent preparation and prosecution in our Chicago, Denver, Fort Wayne, Indianapolis, Minneapolis, Silicon Valley or Wilmington Offices.

Associate Director, IP Counsel or Sr. Counsel – Large Corporation – Ridgefield, CT

June 1, 2021- US - Northeast, Emp - Corporate (in-house), Tech - Chemical / Pharma, Work - Patent Prosecution

Boehringer Ingelheim, a large corporation, is seeking an associate director, IP counsel or Sr. counsel to work in Ridgefield, CT.

Duties & Responsibilities:

Prepares, usually independently, legal documents, including letters, notices, legal opinions, contracts, patent or trademark applications, court/administrative filings, etc.
Expert understanding of state and federal laws, regulations and policies in at least one specialized legal area; strong working knowledge of laws, regulations and policies in a second specialized legal area; ability to interpret and apply such laws, regulations and policies to inform business activities. Has ability to apply law to complex business situations.
Influences clients by identifying and communicating to clients risks associated with complex business activities within lawyer's specialized legal area; helps identify risks in outside lawyer's specialized legal area; provides training and business advice to clients on applicable legal issues within lawyer’s expertise.
Partners with clients by: looking beyond immediate business issue and identifying broader business purposes; proactively applies legal framework to both the specific business activity and the broader business purposes; developing alternative legal solutions to enable the achievement of successful outcomes.
Usually takes the lead in negotiating on behalf of client to achieve solutions consistent with business objectives.
Confers with other in-house and outside counsel where appropriate.
Manages (either directly or indirectly) administrative assistants and other personnel within department. Mentors and/or trains more junior attorneys, paralegals, administrative assistants and/or other personnel within department. Is a member of multi-functional teams.
Keeps current with evolving legal and business issues within lawyer’s expertise and client’s business environment.

Requirements- Sr. Counsel:

Juris Doctorate degree from an accredited law school; admission to at least one State bar.
At least 6 to 8 years relevant legal experience.
Registered to practice before the U.S. Patent & Trademark Office.
B.S/M.S/Ph.D. or significant work experience in biology, immunology, biochemistry, or other life science related field.
A demonstrated competency in the field of biotechnology patent law, including patent preparation and prosecution for large molecule biopharmaceuticals, in particular antibodies.
Working knowledge of pharmaceutical chemistry is preferred.
Excellent oral and written communication skills.
Excellent organizational skills; demonstrates discretion and ability to maintain confidentiality of information.

Requirements - Counsel:

Juris Doctorate degree from an accredited law school; admission to at least one State bar.
At least 2 years relevant legal experience
Registered to practice before the U.S. Patent & Trademark Office.
B.S/M.S/Ph.D. or significant work experience in biology, immunology, biochemistry, or other life science related field.
A demonstrated competency in the field of biotechnology patent law, including patent preparation and prosecution for large molecule biopharmaceuticals, in particular antibodies.
Working knowledge of pharmaceutical chemistry is preferred.
Excellent oral and written communication skills.
Excellent organizational skills; demonstrates discretion and ability to maintain confidentiality of information.

Apply online at:
https://tas-boehringer.taleo.net/careersection/global+template+career+section+28external29/jobdetail.ftl?job=216782&tz=GMT-04%3A00&tzname=America%2FNew_York

Additional Info
Employer Type: Large Corporation
Job Location: Ridgefield, CT

Patent Counsel – Bilingual Japanese/English – Law Firm – Open to any office location in CA, DC, NY or WA.

May 19, 2021- US - MidAtlantic and South, - US - Northeast, - US - Northwest, - US - West, Emp - Law Firm, Work - Patent Prosecution

Knobbe Martens, a prominent IP law firm, seeks motivated candidates to join our team. Applicants must have a strong interest in U.S. and foreign patent prosecution to assist in the drafting and prosecution of U.S. and foreign patent applications. This is a non-partnership track position. This position requires a B.S. in Electrical Engineering, Computer Science, Computer Engineering, Physics, or other similar technical field and a J.D. from an ABA accredited school with a GPA of 3.0 or above. A graduate degree is desired, but not necessary. Candidates must be bilingual in both Japanese and English languages, preferably with experience as a Japanese patent attorney or working with a Japanese law firm. At least three years of patent prosecution experience is desired. Strong Japanese interpersonal skills and business etiquette are essential because the candidate will be expected to maintain, strengthen and build relationships with key Japanese clients and potential clients. Candidates must have superior technical writing skills and be willing to engage in business development activities, including seminars, client social interactions and international travel. If you are forward focused and ready for a challenge, apply online at https://www.knobbe.com.

Patent Agent – Law Firm – Boston, MA

May 16, 2021- US - Northeast, Tech - Biotech, Tech - Chemical / Pharma, Work - Patent Prosecution

Lathrop GPM is seeking a patent agent to work in their Boston, MA offices. Previous experience with patent prosecution, office actions and working in a fast paced law firm environment is preferred. This position offers extensive professional development and mentor support in a team culture. Candidates should have excellent academic credentials, strong writing and communication skills, practical critical-thinking skills, and the desire and ability to work across various technologies.

Patent Attorney – Law Firm – Boston MA

May 14, 2021- US - Northeast, Emp - Law Firm, Tech - Biotech, Tech - Chemical / Pharma, Work - Patent Prosecution

Clark+Elbing LLP is seeking Patent Attorneys in the fields of biology and chemistry. Candidates for the position of Patent Attorney must hold a Ph.D. or equivalent degree in a relevant field along with a J.D. with both a Bar Admission (MA desirable) and a USPTO admission. Candidates must also have a few years (3+) of experience in patent drafting and patent prosecution.

Intellectual Property Associate and Senior Associate – Law Firm – San Fransisco, Boston, Denver, New York, Palo Alto, Washington DC

April 30, 2021- US - Northeast, - US - Northwest, - US - West, Tech - Biotech, Tech - Chemical / Pharma, Tech - Computer Science, Tech - Electrical, Work - Licensing / Other Corporate, Work - Patent Prosecution

WilmerHale, a large law firm, is seeking an intellectual property associate and senior associate for their offices in San Fransisco, Boston, Denver, New York, Palo Alto, or Washington DC.

Patent Attorney or Agent – Law Firm – Boston Metro West

April 28, 2021- US - Northeast, Tech - Computer Science, Tech - Electrical, Tech - Mechanical, Work - Patent Prosecution

Bainwood Huang & Associates, LLC, an established Boston Metro-West patent firm, is seeking a new patent attorney or agent to assist with growing portfolio of patent work. We are a dedicated, reliable, and hard-working team of professionals looking to add to our ranks. Our clients are industry leaders in Internet technologies, electronics, software, and mechanical designs. Candidates should be computer savvy, with solid technical backgrounds and excellent writing and analysis skills.

Patent Agent – Law Firm – Washington, DC

April 27, 2021- US - Northeast

Morgan, Lewis & Bockius LLP, one of the world’s leading global law firms with over 4,000 lawyers and staff in 31 offices, is seeking to hire a Patent Agent for the IP-Life Sciences Practice Group.

This position may reside in any of our Boston, Chicago, Houston, Orange County, Philadelphia, San Francisco, Silicon Valley, and Washington offices

The Patent Agent is supervised by the local Intellectual Property Practice Group Leader, but will have daily contact with, and receive guidance from, all of the partners in the practice group for whom this individual provides support.

Morgan, Lewis & Bockius LLP, one of the world’s leading global law firms with over 4,000 lawyers and staff in 31 offices, is seeking to hire a Patent Agent for the IP-Life Sciences Practice Group.

This position will reside in our Washington, DC office.

Responsibilities:

Preparing, filing and prosecuting patent applications before the US Patent and Trademark Office
Performing prior art searches and analysis
Patentability analysis
Engage in practice development activities to build and maintain client relationships
Prepare substantive client correspondence
Instruct local counsel for foreign filings and Office Actions
Assist in patent clearance studies and other patent-related opinion projects
Ability to apply advanced concepts in any life sciences field, with particular emphasis and/or expertise in molecular biology, cell biology, and/or biochemistry
Study and analyze scientific or technical documents, including previously published patent documents, to assess patentability, novelty and inventiveness
Draft new patent applications
Convert prior provisional applications into utility applications
Convert foreign filed applications into U.S. applications
Convert U.S. applications into foreign applications

Education and experience:

An advanced degree (PhD) in a biological field, including for example Immunology, Molecular Biology or Cell Biology, or similar biologic science, with excellent academic credentials
Experience as a practicing patent agent in the field of life sciences is preferred
Registered to practice before the U.S. Patent and Trademark Office
Excellent writing and research abilities are a must, as well as proficiency in written and verbal communication, and strong organizational skills

Apply online at: https://morganlewis.wd5.myworkdayjobs.com/morganlewis/job/Boston-Massachusetts/Patent-Agent_R1298-1

Additional Info
Employer Type: Law Firm
Job Location: Boston, MA

Litigation Associate – Law Firm – Florham Park, New Jersey

April 18, 2021- US - Northeast, Emp - Law Firm, Tech - Chemical / Pharma, Work - Patent Litigation

Pergament & Cepeda LLP, a small but rapidly growing life sciences and IP law firm in Morris County, NJ is looking for a litigation associate. The firm represents corporate pharma clients in ANDA litigation. The firm also represent patent plaintiffs in patent contingency litigation.

Patent Associate/Agent/Law Clerk/Technical Specialist – Law Firm – New York, NY/Remote

April 13, 2021- US - Northeast, - US - NYC, - US - Telecommute, Emp - Law Firm, Tech - Any / Other, Tech - Computer Science, Tech - Electrical, Work - Patent Agent, Work - Patent Prosecution, Work - Regulatory

MagStone Law, LLP is a modern law firm dedicated to providing solution-focused, cost-effective, and high-quality legal services to our clients. We are all experienced lawyers with backgrounds from the most prominent international law firms. Our practice covers all aspects of corporate transactional law, including business formation, financing, licensing, corporate governance, mergers & acquisitions, and SEC compliance. We also provide legal services in intellectual property, real estate transactions, tax controversy, litigation, and dispute resolution services. Known for our expertise on U.S.-China cross-border transactions, we have become the go-to law firm for many Chinese companies exploring the U.S. market and U.S. companies entering into the Chinese market.

Intellectual Property Coordinator – Non-Profit – Brookline, MA

April 7, 2021- US - Northeast, Emp - Non-Profit, Intellectual Property, Tech - Biotech, Work - Licensing / Other Corporate

The Intellectual Property Program at Dana-Farber is seeking an Intellectual Property Coordinator to join our team of attorneys, technology specialists, and administrative professionals within the Office of General Counsel, the Institute’s full-service legal department. Members of the Dana-Farber Intellectual Property Program are responsible for providing intellectual property counseling, strategic analysis, and portfolio management services to the Institute. At the heart of this team, the Intellectual Property Coordinators work independently and collaboratively to maintain a database of patent, trademark, and copyright filings; docket and monitor related due dates; and coordinate execution of instructions and documents. Each Intellectual Property Coordinator interacts with faculty and staff members across the Institute as well as outside companies, institutions, and law firms. This position is a unique opportunity for an individual with intellectual property experience to be part of a dynamic in-house legal team at the cutting edge of basic science and cancer research.

Foreign Filing Specialist – Law Firm – Alexandria, Virginia or Pittsburgh, Pennsylvania

April 5, 2021- US - MidAtlantic and South, - US - Northeast, Intellectual Property

Buchanan Ingersoll & Rooney PC is seeking a Foreign Filing Specialist for their offices in Alexandria, Virginia or Pittsburgh, Pennsylvania

Essential Duties and Responsibilities:

Prepare new patent applications for filing at appropriate patent office overseas, the Patent Cooperation Treaty ("PCT") U.S. Receiving Office and in the International Bureau of WIPO, ensuring information for application and formalities is accurate and complete.
Obtain and file outstanding documentation such as priority documents, powers of attorney, assignments, formal drawings, etc., needed to complete patent application. Legalize documents if necessary.
Communicate with attorneys, foreign associates, clients, embassies, the State Department, the United States Patent and Trademark Office, the International Bureau of WIPO, including drafting reporting letters to clients and instruction letters to foreign associates, preparing and processing paperwork necessary during pendency of patent application and during life of patent.
Review and docket all incoming mail related to foreign patent applications in department electronic docket.
Review and update daily and biweekly foreign dockets from docketing system. Follow-up with attorneys and clients of upcoming deadlines.
Obtain various cost estimates for attorneys and clients.
Review notifications related to changes in international and foreign patent laws and regulations. Utilize foreign patent reference materials and the Internet, ensuring current procedures is up-to-date.

Required Education/Experience:

High School diploma or equivalent.
Business School diploma or equivalent IP patent foreign filing experience.
Three to five (3-5) years of recent IP patent PCT and foreign filing experience within a law firm environment.
Knowledge and skilled in operating and functions of docketing software, and software related to an electronic work environment (Windows 7, Microsoft Word 2010, Outlook, document management system, copier/scanner, FoundationIP).
Knowledge of PCT and foreign patent laws.
Ability to organize, prioritize tasks and complete them under time constraints.
Ability to concentrate and pay close attention to detail.
Ability to work independently.
Ability to communicate professionally both written and verbal.
Ability to e-file.
Available to work overtime when needed

Apply online at:
careers.bipc.com

Resume required with submission.

Additional Info
Employer Type: Law Firm
Job Location: Alexandria, Virginia or Pittsburgh, Pennsylvania

Senior Patent Paralegal – Large Corporation – Newark, NJ

March 27, 2021- US - Northeast, Emp - Corporate (in-house), Work - Licensing / Other Corporate

Mars, Incorporated is seeking a Sr. Patent Specialist in Newark, NJ. This role will be responsible for managing and supporting the Mars patent prosecution practice for the global Mars Petcare businesses, including associated docket reconciliation and periodic docketing support. This role will also support ongoing contract procurement, as managed by the Global IP team. The Sr. Patent Specialist will assist the IP Legal team in ensuring consistent practices are followed within the team and across internal client groups and will reduce the team’s reliance on external paralegals and outside legal counsel. Position is available in Newark, NJ or Franklin, TN or Hackettstown, NJ.

Patent Agent – Medical School – New York, NY

March 10, 2021- US - Northeast, Work - Admin, Work - Regulatory

NYU Grossman School of Medicine | NYU Langone Health is seeking a Patent Agent. In this position, you will manage activities related to the disclosure and protection of new inventions in engineering, computer science, and physical sciences and the transfer of technology from the Medical Center and the University to the marketplace. This includes assessing the patentability of new invention disclosures from faculty, identifying relevant prior art, analyzing substantive correspondence such as Office Actions from the US Patent and Trademark Office, and creating and maintaining detailed intellectual property records.

Job Responsibilities:

Adhere to Medical Center policies and behavioral standards
Meet with researchers to learn of their research, make them aware of intellectual property considerations, and encourage invention disclosures
Evaluate invention disclosures from faculty for patentability and copyright protection. Conduct prior art searches and summarize results in table and/or paragraph formats. Work with the Director, Intellectual Property, Director, Information Technology/Physical Sciences Technology Transfer, outside counsel, and inventor(s) to evaluate patentability of inventions
Assist Director, Intellectual Property, Director, Information Technology/Physical Sciences Technology Transfer, and outside counsel in preparation and prosecution of patent applications, to ensure adequate claim scope to cover commercially important aspects of invention are protected
Prepare formal patent document such as assignments. Prepare reports and presentations as needed by Director, Intellectual Property
Prepare and file federal copyright registrations
Monitor and manage patent prosecution deadlines. Ensure that responses to communications and office actions from patent offices (US and foreign) are timely met without extensions
Analyze and summarize Office Action rejections including any cited prior art (includes proposing arguments and/or claim amendments) and communicate to inventors, Director, Intellectual Property, Director, and Information Technology/Physical Sciences Technology Transfer
Create and maintain claim charts within a particular patent case as well as within patent families. Create and maintain patent family trees
Create and maintain detailed notes for each patent case in electronic database including data entry
Monitor deadlines and generate reports for patent maintenance fees and annuities and work with OIL Business Managers to ensure fees are timely paid. Maintain NYU online account for patent maintenance and annuity fees
Research prosecution matters on PAIR (and also foreign patent databases) and internal intellectual property management database
Ensure compliance with government reporting requirements for use of federal funds supporting research that has given rise to inventions and/or creations including data entry to iEdison database
Remain abreast of changes to USPTO rules, current patent prosecution issues and trends
Other duties as assigned

Qualifications:

1-3 years experience either at a company or law firm.
Masters degree in science or engineering required; Ph.D. is preferred; post doctoral research training or research experience is preferred.
Experience with patenting process and patent prosecution
Excellent administrative, negotiating, interpersonal and communication skills necessary
Ability to work effectively with academic scientists to achieve consensus and promote good long-term relationships
Ability to work to tight deadlines and manage own caseload
Outstanding attention to detail and strong prioritization skills
Excellent written and verbal communication skills
Advanced level of skill with Microsoft products such as Word, Excel, and PowerPoint and also online research tools
A technical writing sample is required.
Must be Registered U.S. Patent and Trademark Office Patent Agent (has taken and passed the patent bar examination and has good working understanding of patent process and procedures).
Strong technical background in engineering, computer science, or a physical science with excellent academic credentials.

Apply online to Job # 1078451_RR00047052 Jobs.nyulangone.org

Additional Info
Employer Type: Other
Job Location: New York, NY

Director of IP Clinic – Education – University Park, PA

February 22, 2021- US - Northeast, Emp - Educational, Work - Patent Prosecution

Penn State Law, based in University Park, PA, is seeking to hire an experienced legal professional to serve as Director of the Intellectual Property Clinic. This Clinic represents startup and early-stage companies on intellectual property (IP) matters, including patent-related issues. As determined by credentials and experience, the successful applicant may be appointed as a Professor of Practice or as an Assistant, Associate, or full Clinical Professor of Law. The Penn State Law IP clinical experience is designed to provide high-quality IP law experience to Penn State Law students and IP support to entrepreneurs who are affiliated with Penn State as faculty, staff or students as well as others based anywhere in Pennsylvania irrespective of any connection to Penn State. The clinical experience is offered in direct support of the University’s Invent Penn State initiative (https://invent.psu.edu) and Penn State President Eric Barron’s commitment to “promoting patents, licensing and start-ups” as part of Penn State’s effort to expand its already significant role in Pennsylvania’s economic development and create career opportunities for Penn State graduates (http://news.psu.edu/story/326830/2014/09/19/administration/president-emphasizes-economic-development-and-student-career).

Additional responsibilities will include teaching a doctrinal IP law school class or classes. The successful candidate will also be expected to interface with other colleges and units within Penn State University and other participants in the Pennsylvania-wide entrepreneurial community, including Penn State’s 21 LaunchBox business accelerators, Ben Franklin Technology Partners and the 16 Small Business Development Centers (SBDCs) in Pennsylvania. The successful applicant will be embedded at the Happy Valley LaunchBox (http://launchbox.psu.edu/), a business accelerator in downtown State College, along with Penn State Law’s Entrepreneur Assistance Clinic and the Penn State SBDC. State College, the location of Penn State’s University Park campus, has a vibrant entrepreneurial ecosystem and has been named as one of the Top 10 Cities for Entrepreneurs.

This position requires a J.D. degree from an accredited law school, membership in, or eligibility for admission to, the Pennsylvania Bar, and registration with the U.S. Patent and Trademark Office. The successful applicant will have experience working with emerging technology companies on patent-related and other intellectual property matters. Classroom teaching experience is also highly desirable, but not required. The successful applicant will have a keen desire to teach law students how to navigate this challenging area of the law and the patience to work with the students as they develop as lawyers. Other qualifications include the flexibility to work on a broad array of IP client matters and the ability to integrate IP clinical work with that of the Penn State Law Entrepreneur Assistance Clinic and the Invent Penn State initiative.

Diverse candidates are encouraged to apply. Penn State is committed to and accountable for advancing diversity, equity, and inclusion in all of its forms. We embrace individual uniqueness, foster a culture of inclusive excellence that supports both broad and specific diversity initiatives, leverage the educational and institutional benefits of diversity, and engage all individuals to help them thrive. We value inclusive excellence as a core strength and an essential element of our public service mission. Information on the different units within Penn State Law is available at https://pennstatelaw.psu.edu/.

This position is a benefits-eligible, fixed-term academic appointment beginning in Fall 2021 with a three-year contract, subject to possible renewal.

See other information at the application portal at: https://psu.wd1.myworkdayjobs.com/en-US/PSU_Academic/job/University-Park-Campus/Director--Intellectual-Property--IP--Clinic---Penn-State-Law_REQ_0000010294

Inclued a resume and cover letter with your submission.

Patent Attorney (EE or Life Sciences) – Law Firm – Gaithersburg, MD

February 14, 2021- US - Northeast, Emp - Law Firm, Tech - Biotech, Tech - Chemical / Pharma, Tech - Electrical

Edell, Shapiro, & Finnan is an intellectual property law firm located in the Washington, DC metropolitan area. We specialize in all areas of intellectual property law with particular emphasis in patent and trademark law.

Responsibilities:

Draft patent applications for U.S.-based and some non-U.S.-based companies. Meet in-person or virtually with inventors, discuss the technology, and draft patent applications. Understand a wide range of technologies, or be able to quickly get up to speed on technologies.
Prosecute patent applications before the USPTO, including conducting examiner interviews, filing responses, appeals, etc.
Instruct non-U.S.-based law firms in the prosecution of patent applications in various countries outside the U.S.
Conduct patentability, infringement/clearance and validity studies, and related client counseling and opinion rendering.
Participate in IPR proceedings at USPTO.
Communicate with outside counsel in connection with all activities mentioned above.
EE candidate will work in a wide range of technologies including wired and wireless networks and devices, wireless communication protocol technologies, media communication systems, network security, optical networks and devices, as well as medical electronic devices, and database systems.
Life Science candidate will work in a wide range of life science technologies including gene silencing, genetic analysis, recombinant antibodies, proteomics, transfection, and protein and small molecule pharmaceuticals.

Qualifications:

A successful applicant must possess:

At least 2 years of substantial patent application drafting experience, particularly in the technology areas listed above;
Registration as a U.S. patent attorney and knowledge of U.S. patent practice and procedures;
J.D. degree from an accredited law school and a license to practice in at least one U.S. state;
Excellent academic credentials;
Strong writing, communication, organizational and analytical skills; and
EE candidate must have undergraduate focus areas in electrical engineering, physics or computer science.
Life Sciences candidate must have Graduate-level experience in molecular or cell biology, genetics, or organic chemistry.

Apply via email to:
careers@usiplaw.com

Include a resume, cover letter, writing sample, and transcripts with your submission.

Additional Info
Employer Type: Law Firm
Job Location: Gaithersburg, MD

Patent Prosecution Associate – Large Law Firm – Portland, OR

October 27, 2020- US - Northeast, Emp - Law Firm, Work - Patent Prosecution

Stoel Rives LLP's Technology & Intellectual Property practice is a multidisciplinary group that includes talented professionals with experience in business, regulatory law, and litigation related to intellectual property rights (patents, copyrights, trademarks, and trade secrets). Our patent prosecution team helps clients secure patent rights globally and provides strategic counseling so clients can enforce and monetize their IP assets.

Associate Director and Patent Counsel – Large Corporation – Boston, MA, or New Haven, CT

October 27, 2020- US - Northeast, Tech - Biotech, Work - Patent Prosecution

Alexion Pharmaceuticals is seeking a patent attorney to address a full scope of global biopharmaceutical patent issues. The attorney in this position will partner with clients and other attorneys across multiple functional areas to build, maintain, defend and enforce the company’s intellectual property interests. The work will include client counseling; patent preparation and prosecution; developing legal opinions with respect to patentability, validity and freedom to operate; supporting due diligence reviews; and intellectual property related transactional work. This position can be based from any of the following Alexion locations; Boston, MA, or New Haven, CT, and may require up to 5% travel.

Intellectual Property Manager – Company – Victor, NY

October 15, 2020- US - Northeast, Tech - Biotech, Tech - Mechanical, Work - Licensing / Other Corporate, Work - Patent Litigation

LSI Solutions, located in beautiful Victor, New York, is a dynamic and growing medical device company with nearly 400 employees dedicated to advancing minimally invasive therapeutics through research, development, manufacturing, and marketing of minimally invasive surgical instruments.Intellectual Property Manager

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