Patent Agent

Legal Irvine, California


Description

The Patent Agent is responsible for participating in the development and execution of global patent strategies and managing day to day patent activities to support multiple engineering, R&D and clinical development programs. 

Responsibilities

  1. Manage the company’s patents, patent applications, trademarks, and related legal issues world wide.
  2. Manage intake of freedom-to-operate requests and conducts worldwide patent searches
  3. Identify inventions and captures high-value IP in collaboration with members of various Business Development, Engineering, R&D and development groups within the Company.
  4. Partner with inventors to obtain invention disclosure forms and assignment documents.
  5. Draft high quality patent applications and prosecutes patents relating to inventions that are strategically aligned with the Company’s business objectives.
  6. Manage and improves processes for tracking innovations and competitor IP activities.
  7. Work and interacts with collaborators and other external strategic partners to implement global patent strategies.
  8. Communicate complex patent advice to team members at every level in the organization, with a wide range of scientific backgrounds.
  9. Assist with strategic IP due diligence, including conducting prior art and patent searches and analyzing the patent portfolios of competitors and potential collaborators.
  10. Evaluate IP risks and recommends solutions with little supervision.
  11. Review proposed publications and assesses potential impact on the Company’s IP portfolio.
  12. Contribute to development of best practices within the Legal group.
  13. Manage the United States, and international patent portfolio and coordinates with outside counsel and in-house attorneys.
  14. Coordinate with outside counsel to ensure patent docketing system is up to date.
  15. Conduct patent training sessions with various engineering, R&D and development groups within the Company
  16. Review and support the rationalization of the company’s patent portfolio. 
  17. Provide other legal and business support as needed.
Qualifications

  1. Bachelor’s degree in Engineering, Life Sciences, or similar
  2. Minimum 4 years of experience drafting patent applications
  3. Prosecution experience, a plus
  4. Technical expertise in the field of medical device
  5. Ability to plan, organize and document complex systems while complying with current policies and procedures.
  6. Excellent communication skills; customer service oriented. 
  7. Ability to thrive in a demanding, change-oriented, fast paced environment requiring a high degree of deadline-driven productivity. 
  8. Strong task-management and prioritization skills.
  9. Ability to work independently and manage multiple tasks while meeting deadlines. 
  10. Strong written and oral communication skills, including an ability to articulate ideas and clearly and appropriately influence others
  11. Must be self-motivated and able to manage multiple projects and meet deadlines; able to work independently and as part of a team.