Patent Agent Job Description Sample
BlueRock Therapeutics is seeking a biotech Patent Agent with 5-10 years of experience to join its Legal team. The successful candidate, reporting to the Senior Director of IP, will directly support one or more of BlueRock’s therapeutic programs, contribute to global patent preparation & prosecution strategy and, help build the company’s intellectual property portfolio. In addition, the successful candidate will provide diligence support to research and business teams as needed. The successful candidate should have meaningful patent drafting and prosecution experience in cell therapy, immunology, and/or gene editing technologies and significant research or technical experience in one or more of these fields.
- Identify patentable inventions through regular interactions with internal R&D project teams and collaborators, including evaluating inventions, conducting and analyzing prior art searches, and generating and executing on corresponding patent protection strategies.
- Perform FTO/patentability searches and analyses in support of R&D and Business Development teams.
- Monitor and analyze competitive intellectual property.
- Manage outside counsel on patent preparation and prosecution matters.
- Registered to practice before the U.S. Patent & Trademark Office.
- Ph.D. in a molecular biology, cell biology, immunology, or related discipline is preferred; B.S./M.S. with significant work experience in cell therapy and/or gene engineering may be considered.
- 5-10 years of experience conducting high-quality patent search and diligence projects using various search engines.
- 5-10 year of experience in drafting and prosecuting pharmaceutical and/or biotechnology patents; experience with cell and/or DNA/RNA-based therapeutics is highly preferred.
- Proven track record of communicating complicated IP issues to scientists and management.
- Capable of recognizing, assessing, and responding to urgent matters with timely, practical, and clear solutions.
- Ability to manage and prioritize multiple matters simultaneously and independently.
This Patent Agent is responsible for providing a broad range of IP services to the Company, both directly and in conjunction with our outside IP counsel, with a focus on drafting and prosecuting patent applications, eliciting invention disclosures, contributing to the Company's IP strategy, and analyzing competitive products for potential infringement issues. This position reports to, and works closely with, the Director of Patents and will be a business partner who will collaborate effectively with Lutron's extensive electrical, mechanical and software inventing and IP-savvy engineers.
Providing pro-active and cost effective and efficient IP services tailored to the needs and priorities of the Company's business units, including interacting and managing relationships with technical, business and legal personnel.
Working closely with the internal IP attorneys to continually develop the IP Department.
Understanding the relevant Company businesses, including knowledge of relevant business and technology strategies, R&D activities and commercialization plans.
Collaborating with the business units and leadership to align IP strategies with business, technology and commercialization plans.
Implementing IP strategies in a cost- and resource-efficient way by providing a broad range of IP advice and services, including the securing and maintaining of appropriate worldwide protection for Company IP, and advising on the protection of confidential information and trade secrets, publication strategies, etc.
Eliciting invention ideas and disclosures from Company engineers.
Preparing and prosecuting patent applications, including engagement with engineers and product managers.
Managing outside counsel's drafting and prosecution of patent applications.
Identifying IP risks to Company businesses worldwide and managing them, where appropriate with IP attorneys, including protecting Company IP from infringement and avoiding infringement of third-party IP.
Educating and training Company employees and contractors on IP issues; supporting the development and implementation of, and compliance with, internal policies and procedures.
Preparing, obtaining, and analyzing patent searches and providing assessments on patentability, prior art, non-infringement and validity.
Assisting with IP litigations, IPR's, PGR's and Reexaminations.
Assisting with IP licensing, monetizing or other creation of tangible value from IP.
Understanding and informing management regarding IP rights of competitors and third-party business partners.
Maintaining expertise in patent laws of the US; demonstrating ability to work within a field characterized by much uncertainty; maintaining a working knowledge of patent laws, regulations and processes globally.
Following and mastering relevant technology developments, both internally and externally;
Supporting the development of budgets and exercising appropriate control over internal and external costs.
Qualifications and Skills:
B.S. in Electrical Engineering required.
Advanced degree in Electrical Engineering preferred.
USPTO Patent Bar registration required.
Minimum of three years of engineering experience.
Some software/firmware experience preferred.
Demonstrated ability to be a pro-active team player and partner effectively with internal clients in a collaborative environment to achieve stated business objectives.
Self-starter with a sense of urgency, ability to prioritize, handle unanticipated situations effectively and work well under pressure.
Excellent written and oral communication skills, including the ability to convert complex patent concepts into useful business guidance.
Commitment to the highest standards of ethical conduct.
Highly motivated and positive attitude.
Ability to handle confidential and sensitive business matters.
Lutron Electronics position as the leading manufacturer of lighting controls worldwide, our unsurpassed quality, the breadth and depth of our product offerings, and our commitment to servicing our worldwide customers have resulted in strong sales and profitability growth year over year. This growth has in turn allowed the company to continue to invest in recruiting and retaining the best people we can find to service our customers. Continuous growth has also fueled our ability to constantly develop new technologies and new manufacturing processes that in turn drive the creation of new or better products and services. EOE/AA
bluebird bio is a clinical-stage biotech company focused on developing and delivering the most advanced gene therapy based-products as a one-time treatment option for patients with severe genetic and rare diseases and cancer. We are leading the gene therapy revolution. Our integrated product platforms encompass gene therapy, cancer immunotherapy and gene editing – providing us with the potential to treat, and hopefully cure, a broad range of serious diseases. For more information, please visit www.bluebirdbio.com.
bluebird bio is seeking a biotech Patent Agent with 3+ years of experience to join its colorful and cooperative Legal team. Reporting to the Director, IP Counsel, this person will directly support all of bluebird bio's integrated product platforms. The successful candidate will directly work on a broad range of global patent preparation & prosecution matters in a fast-paced environment to build and maintain a strong intellectual property portfolio in support of the company's development and commercialization efforts. In addition, the successful candidate will provide diligence support as needed. The candidate should have meaningful patent drafting and prosecution experience in the fields of gene therapy, immunotherapy, and gene editing technologies and significant research or technical experience in these fields.
Primary Responsibilities Include
Identify patentable inventions through frequent interactions with internal R&D project teams, and facilitate the creation of appropriate patent protection strategies and execute on those strategies with guidance as needed
Interact and instruct outside counsel on patent filing and prosecution matters
Interact and instruct foreign agents on patent filing and prosecution matters
Prepare and prosecute patent applications directly with the USPTO
Review proposed publications and presentations for potential impact on patent portfolio
Support the provision of patentability and FTO opinions for R&D pipeline programs and Business Development opportunities
Education And Skills Requirements
Superior academic credentials from well-regarded institutions
Ph.D. in Biochemistry, Biology, Molecular Biology, Immunology preferred; BS/MS degree in Biochemistry, Biology, Molecular Biology, Immunology with substantial relevant research experience will be considered
Must be admitted to practice before the U.S. Patent and Trademark Office
3 - 5+ years of demonstrated experience in prosecuting and preparing technically relevant patent applications at a highly regarded law firm, corporate legal department or university tech transfer office is preferred or equivalent experience. Preference may be given to candidates that have practiced patent law at a highly-regarded law firm and in a corporate legal department or tech transfer office. In addition, ideal candidates will have significant research or technical experience in gene therapy, immunology, and gene editing fields.
Preparation and prosecution experience with both US and various foreign patent offices and patent practices are preferred
Strong oral and written communication skills are essential; should be proficient in MS Office suite;
Demonstrated interpersonal interaction skills;
Strong analytical thinking and attention to detail;
Strong organizational and prioritization skills; should be a self-starter; should be able to effectively handle multiple matters simultaneously, and should be adept at adjusting priorities when required
Morgan, Lewis & Bockius LLP, one of the world's leading international law firms with almost 4000 lawyers and staff in 30 offices is seeking a Patent Agent for the IP-Life Sciences Practice Group reports directly to an IP-Life Sciences Partner. Morgan Lewis is a leading choice for businesses seeking protection of valuable Intellectual Property rights. The firm has more than 150 intellectual property professionals and technical specialists. We are widely regarded as a leader in providing strategic patent advice to startups and Fortune 500 companies alike. One of the major focuses of our office is patent prosecution for the life sciences industry, including biotechnology, pharmaceuticals and medical devices. We also routinely handle complex post-grant proceedings at the US Patent Office. This position will reside in the Boston Office and will be responsible for:
Preparing, filing and prosecuting patent applications before the US Patent and Trademark Office
Performing prior art searches and analysis
Engage in practice development activities to build and maintain client relationships.
Prepare substantive client correspondence.
Instruct foreign filings and Office Actions.
Assist in patent clearance studies and other patent-related opinion projects
Experience / Qualifications
An advanced degree with excellent academic credentials
At least two years of relevant patent prosecution experience in the fields of chemistry, biology or biomedical engineering
A registered Patent Agent
Strong research, writing, communication, interpersonal, and organizational skills.
Qualified candidates must apply online by visiting our website at www.morganlewis.com and selecting "Careers."
Morgan Lewis is an equal opportunity employer and all qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability status, protected veteran status, or any other characteristic protected by law.
Pursuant to applicable state and municipal Fair Chance Laws and Ordinances, we will consider for employment qualified applicants with arrest and conviction records.
Job Description: SummaryBD is seeking a patent agent with 3-5 years of substantive preparation and prosecution experience, to be located at its Peripheral Intervention business unit in Tempe, Arizona. Reporting to the Associate General Counsel – IP co-located in Tempe, the position will have two main areas of responsibility: supporting one or more technology areas within the Peripheral Intervention business unit and acting as a partner and subject matter expert to the IP Operations group in organization and management of the patent portfolio. The successful candidate must be able to work effectively as part of a team, develop and maintain strong relationships with business and R&D associates, and possess strong process and organization skills.
Essential Job Functions:
Pro-actively work with R&D team to facilitate preparation of invention disclosures
Manage worldwide preparation and prosecution activities of outside counsel
Provide support to patent attorneys in performing freedom to operation activities
Educate and train technical staff and management
Work with the IP Operations team as a subject matter expert
Assist the IP Operations team in Identifying opportunities to improve the effectiveness and efficiency of patent operations and in implementing such improvements. Such activities may include assessment of end-to-end patenting activities, reviewing processes involving the Anaqua IP Management System, and organizing, validating and reporting out patent data.
Bachelor's or higher in engineering or science, preferably in chemical or mechanical arts
Admitted to practice before the U.S. Patent and Trademark Office
3-5 years substantive patent preparation and prosecution experience
Experience with IP management systems such as Anaqua desirable
Primary Work LocationUSA AZ - Tempe BPV Building 3
The Patent Agent --to be based in San Jose, California --will be a key member of Stryker's Intellectual Property team and the Endoscopy division's patent applications expert. This individual will report to and work under the supervision of the Division IP Legal Team, and will provide patent-related expertise and support to the team, to the Division's Senior IP Manager, and to each of the Division's business units upon request. The patent agent's main goal will be to assist the Division in building its patent portfolio by significantly increasing the number of patent application filings.
Work with the Division's Senior IP Manager and Business Unit R&D teams to validate identified patenting opportunities.
Review invention disclosures for patentability.
Conduct patent searching as requested by the Division IP Legal Team to: assist in patent procurement activities, product development, right to use / freedom to operate (FTO) matters; and identify and evaluate potential infringement concerns.
Coordinate the preparation of patent applications between R&D inventors and outside patent counsel; assist outside patent counsel in the preparation of such applications.
Assist the Division's Senior IP Manager in preparing for and running each Patent Review Board meeting.
Conduct patent searching and review as requested as part of the freedom-to-operate (FTO) process.
Conduct patent landscape searching as requested to assist the Division IP Legal team in providing recommendations and guidance to the Business Development team.
Assist the Endoscopy Division IP Legal team to provide patent-related IP due diligence support to the Business Development team, including patent-related IP support to facilitate M&A activities.
Build strong relationships and influence business managers.
5+ years of experience in development and research in the medical device or other related industry.
5-7+ years of experience in drafting, prosecuting and managing patent applications, and advising business managers.
Demonstrated experience in helping to build a patent portfolio.
Ability to provide critical thinking, creativity, and project management, with attention to detail and demonstrated ability for follow-up.
Ability to meet tight deadlines and manage and adhere to detailed budgets.
Demonstrated ability to influence others and be appropriately assertive to challenge concepts and inspire innovation.
Demonstrated ability to work independently.
Bachelor's Degree in Electrical Engineering, Mechanical Engineering, Biomedical Engineering, or related field.
Require USPTO Patent Agent Registration.
Work From Home: No
Travel Percentage: Up to 25%
Stryker Corporation is an equal opportunity employer. Qualified applicants will receive consideration for employment without regard to race, ethnicity, color, religion, sex, gender identity, sexual orientation, national origin, disability, or protected veteran status. Stryker is an EO employer – M/F/Veteran/Disability.
Stryker Corporation will not discharge or in any other manner discriminate against employees or applicants because they have inquired about, discussed, or disclosed their own pay or the pay of another employee or applicant. However, employees who have access to the compensation information of other employees or applicants as a part of their essential job functions cannot disclose the pay of other employees or applicants to individuals who do not otherwise have access to compensation information, unless the disclosure is (a) in response to a formal complaint or charge, (b) in furtherance of an investigation, proceeding, hearing, or action, including an investigation conducted by the employer, or (c) consistent with the contractor's legal duty to furnish information.
23andMe is seeking a highly motivated, experienced Patent Agent to join the legal department to implement and develop strategy and protection of intellectual property related to 23andMe's large and small molecule therapeutic programs and Personal Genome Services. You are adept at providing relevant and clear guidance, including patentability, freedom-to-operate, infringement and validity analyses, and risk evaluation and mitigation strategies to scientists and business leaders in support of business objectives and decision-making.
In addition to your patent agent work, you will also perform general duties of a patent and trademark paralegal. You are exceedingly well-organized, flexible and enjoy challenges of working on diverse issues daily. You are a collaborative partner, work rapidly, diligently and independently with minimal direction.
Who we are
Since 2006, 23andMe's mission has been to help people access, understand, and benefit from the human genome. We are a group of passionate individuals pushing the boundaries of what's possible to help turn genetic insight into better health and personal understanding.
What you'll do
Perform global patent preparation and prosecution, portfolio development and management, IP searching and/or landscaping, IP diligence assessments, freedom-to-operate, infringement and validity analyses, and risk evaluation and mitigation strategies.
Advise the business on IP strategies, risk & associated mitigation strategies.
Manages external relationships with outside counsel and collaborators.
Act as a key resource for patent/trademark/copyright outside counsel and IP vendors, while managing coordination and communication with internal business partners.
Lead development and implementation of IP operational processes, as needed, such as patent/trademark/copyright formalities and official inventor Declarations and Assignments.
Monitor timelines to ensure timely execution of patent and trademark deadlines.
What you'll bring
Admission to practice before the United States Patent and Trademark Office.
5+ years of experience practicing patent or intellectual property law.
Experience in all aspects of U.S. and foreign intellectual property law relating to biotechnology, preferably in the pharmaceutical industry with a law firm or corporation.
Undergraduate or (preferably) advanced degree in biology or biochemistry.
Expert analytical, legal drafting and verbal and written communication skills and the ability to effectively communicate with business partners across the organization.
Strong counseling skills with a client service focus, keen attention to detail and the ability to work independently and in teams; strong organizational skills; the ability to prioritize, work efficiently or multi-task, and to be agile and meet bold deadlines.
23andMe, Inc. is the leading consumer genetics and research company. Our mission is to help people access, understand and benefit from the human genome. The company was named by MIT Technology Review to its "50 Smartest Companies, 2017" list, and named one of Fast Company's "25 Brands That Matter Now, 2017". 23andMe has over 5 million customers worldwide, with ~85 percent of customers consented to participate in research. 23andMe is located in Mountain View, CA. More information is available at www.23andMe.com.
At 23andMe, we value a diverse, inclusive workforce and we provide equal employment opportunity for all applicants and employees. All qualified applicants for employment will be considered without regard to an individual's race, color, sex, gender identity, gender expression, religion, age, national origin or ancestry, citizenship, physical or mental disability, medical condition, family care status, marital status, domestic partner status, sexual orientation, genetic information, military or veteran status, or any other basis protected by federal, state or local laws. If you are unable to submit your application because of incompatible assistive technology or a disability, please contact us at firstname.lastname@example.org. 23andMe will reasonably accommodate qualified individuals with disabilities to the extent required by applicable law.
Please note: 23andMe does not accept agency resumes and we are not responsible for any fees related to unsolicited resumes. Thank you.
Seeking patent agents / Technical Specialist with patent prosecution experience to join a premier Life Sciences Patent Counseling and Prosecution Group. Qualified candidates must have experience representing pharma and life sciences companies in patent prosecution, reexamination or IPR proceedings, due diligence, and freedom to operate investigations.
ESSENTIAL JOB FUNCTIONS:
Drafting patent applications
Managing domestic and international dockets
Preparing responses to US and foreign Office Actions
Corresponding with foreign associates
Formulating search strategies
Analyzing patents in connection with due diligence or freedom to operate opinions, and evaluating patentable subject matter
Performs any and all other duties as necessary and as assigned by your supervisor for efficient functioning of the Department, Office and Firm.
QUALIFICATIONS / Knowledge Skills and Abilities:
Ideal candidate must have advanced degree in Organic Chemistry.
For Patent Agents, must be a registered patent agent with the U.S. Patent and Trademark Office.
For Technical Specialists, must be willing to study for and take U.S. Patent and Trademark Office Bar Exam and become a register patent agent.
2-4 years prior work experience in a law firm required
Prior work experience as a scientist strongly preferred.
Additional Job Description
Dechert LLP is committed to ensuring equal employment opportunity and non-discrimination. The Firm prohibits unlawful discrimination in any term or condition of employment against any employee or applicant for employment because of the individual's race, color, creed, religion, sex, age, marital status, national origin, ancestry, citizenship, sexual orientation, gender identity or expression, genetic information, disability, membership or service in the armed forces, or any other characteristic protected by law.
Patent Attorney Or Patent Agent (Mechanical Engineering)
Christensen O'Connor Johnson Kindness PLLC is seeking an associate level patent attorney or patent agent to join our firm’s Mechanical Engineering Patent Practice Group. Responsibilities include patent preparation and prosecution, patent licensing, and conducting due diligence on new products and technology acquisitions towards rendering opinions to clients. The position requires working closely with clients, inventors, and firm attorneys.
Qualified candidates will demonstrate superior analytical, communication, and interpersonal skills, as well as an ability to develop and expand internal and external relationships. The candidate must excel in a team environment, as well be a motivated self-starter who works well under pressure, with the flexibility to thrive in a fast-paced environment.
Requirements include a B.S. in mechanical engineering, a J.D. from an accredited law school (not required for agent), a minimum of two years of patent law experience, a license to practice law in at least one state, preferably Washington (not required for agent), and admittance to practice before the United States Patent and Trademark Office (USPTO).
- Conducting prior art searches
- Determining ownership rights to various parts of an invention
- Drafting patent applications and working with the USPTO to resolve patent examiner questions
- Patent licensing
- Assisting clients whose patents have been infringed
- Providing support to the litigation department
- Advising clients on the use and protection of patents
- Assisting clients with identifying the nature of their intellectual property
- Monitoring existing and proposed patents
- Attending meetings and conducting conference calls with clients and contacts in the United States and overseas
- Dealing with general inquiries on patent protection
- Filing domestic and international patent applications
- Handling patent renewals
- Bachelor's degree in mechanical engineering
- J.D. degree from an accredited law school (not required for agent)
- Licensed to practice in at least one state, preferably Washington (not required for agent)
- Admitted to practice before the USPTO
Junior Patent Prosecution Associate Or Patent Agent – Life Sciences Practice
Fenwick & West has been a leader in technology and life sciences law since 1972. One reason for its success is Fenwick's Patent Group, which was recently named by IP Media Group as the U.S.
Patent Prosecution Firm of the Year for 2018 at its Global IP Awards, Managing IP's U.S.
Patent Prosecution Firm of the Year for 2017, and by Juristat and Patexia as among the top 5 and the top 2% of patent prosecution practices, respectively, based on their statistical analysis of firm performance.
Presently, we are seeking a junior patent associate or patent agent (with up to three years of legal practice experience) for our life sciences practice for our Silicon Valley office. We are open to candidates interested in our San Francisco office.
The ideal candidate will have a PhD (or MD) in cell biology, immunology, immuno-oncology, cell-based therapies, molecular biology, oncology, molecular genetics, antibody engineering or a related field. Post-doctoral experience is desirable, but not required. Member of the California Bar required for associate candidates. A USPTO registration number, superior academic credentials, excellent oral, written and interpersonal skills a must.
To apply, please include a cover letter, resume, academic transcripts, and a writing sample.
Making better hires starts with building better job descriptions
- Browse 100s of templates across 40+ industries
- Customize your template with your company info & job requirements
- Post it to 20+ job boards in seconds – for FREE!