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Job Description
The Patent Agent / Attorney will lead in-house intellectual property efforts and be responsible for developing the Company’s intellectual property strategy, writing original U.S. utility patent applications and liaising between the Company and the Company’s outside intellectual property firm. The ideal candidate will bring strong patent application drafting skills, leadership abilities and a collaborative team style to our patent development approach. He or she will be responsible for evaluating invention disclosures, patentability search results, and drafting of patent applications. She or he will work closely with patent attorneys, scientists and management to elicit intellectual property disclosures, extract details and generate documentation of intellectual property, including patent, trade secret and copyrighted assets, and work with outside counsel to secure protection for intellectual property for inventions and discoveries made by or licensed to ONCE.
Candidates must be familiar with patent laws, patent application preparation rules and practice before the US Patent Office, as well as best practices for preparing applications also intended for counterpart filing outside of US. Registration with the USPTO required. This IP leader will drive early stage intellectual property due diligence analyzing third party intellectual property assets associated with potential license or acquisition, provide proactive IP analysis to the CTO and technical teams related to future R&D efforts, assist in IP infringement/enforcement analysis and litigation support, and monitor technology and IP activities of the Company’s competition.
Essential Duties & Responsibilities
- Partner with engineers, project managers and the Chief Technology Officer to create, identify, document and evaluate ideas for new patent applications to protect company assets
- Lead the invention disclosure process by guiding employees, drafting claims, developing applications that protect current and future products in support of outside counsel
- Work with Company technical staff to assess future R&D patent needs by assessing company product strategy to determine IP gaps, barriers, opportunities and future filing needs.
- Liaise with and provide oversight of the Company’s outside counsel resources
- Supports outside counsel related to pre-patent filing review, invention viability assessment, patent validity and infringement analysis, preparation of patent applications and prosecution
- Supporting outside counsel with freedom to practice, patentability and patent validity analysis including intensive patent and non-patent literature database searching
- Support outside patent attorneys with intellectual property opinion and landscaping efforts
- With outside counsel, investigate patent utilization, commercial offensive and defensive value to help make decisions to file, maintain or abandon patents and patent applications
- Provide litigation support in patent enforcement and/or defense actions
- Providing proactive prioritization, strategic consultation and cultivation of the intellectual property portfolio in support for the company’s intellectual property needs
- Conduct patentability analysis, perform prior art searches, conduct state of the art patent searches and assist engineers to research the patent landscape and product development
- Establish, maintain and facilitate the Company’s intellectual property compliance process, including the counseling, training and mentoring of employee and suppliers on IP issues
- Evaluate intellectual property in relation to present and emerging standards and technologies
- Evaluates the validity, scope and value of a target company's intellectual property assets for possible acquisition or license, working with outside counsel on developing IP opinions
- Actively monitor and scan competitive intellectual property actions related to their technology developments, issued IP and provide prompt impact analyses of such events
- Search technical or other data bases and non-patent materials and analyze relevant reference as to potential infringement of company IP and/or validity of patent or invention of interest
Requirements
- A bachelor's degree in mechanical or electrical sciences or engineering is required or a graduate degree with broad based mechanical or electrical engineering skills is highly desirable.
- Licensed/admitted to practice as a Patent Agent before the U.S. Patent and Trademark Office.
- At least three years of experience in intellectual property practice, including experience drafting and prosecuting U.S., foreign, and international (PCT) patent applications and experience assisting responsible attorneys with patentability, freedom-to-operate, validity, and non‑infringement opinions
- The candidate will possess the temperament to work with a prolific and brilliant CTO inventor in a fast-paced, rapidly-changing, new-business environment, where success and fun are important
- The candidate must possess a strong and demonstrated ability to communicate technical material in clear and precisely written English. Fluent English speaker.
- The candidate must be a self-starter who is highly organized and detail oriented, with strong reasoning and analytic skills, as well as a highly-developed sense of emotional intelligence.
- The candidate must be proficient in the use of computers with experience using Microsoft Word.
- Demonstrated ability and desire to work creatively and independently.
- Excellent verbal and written communication skills with strong business acumen to facilitate and appropriately liaise on issues between technical and legal colleagues, including outside counsel.
- The candidate will desire an exciting and invigorating work environment, one where he or she thrives when managing multiple simultaneous projects under deadline pressure.
- An ability to be productive and successful in an intense and exciting work environment
Desired/Preferred Qualifications
- An advanced degree in mechanical or electrical sciences or engineering
- The preferred candidate will possess a creative and collaborative mindset combined with excellent writing, oral communication, research and analytical skills.
- At least five years of significant patent prosecution and drafting experience either at a law firm or in-house within a large patent legal department or other equivalent experience
- Chinese reading and writing skills
- Good balance of high level strategic and detailed tactical thought processes and judgment
- Lighting and agriculture industry knowledge
- Strong communication skills and influencing skills, strong emotional intelligence, including executive presentation and written skills
- Ability to work effectively in a team environment
- People management skills
Physical Job Requirements
The physical demands described within the Responsibilities section of this job description are representative of those that must be met by an employee to successfully perform the essential functions of this job. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.
- Standing/sitting 8+ hours per day
- Communicate effectively over the telephone
- Efficient use of computer
- Ability to travel--domestic and international
- While performing the duties of this job, the employee is regularly required to be independently job mobile. The employee is also required to interact with a computer, and communicate with peers and co-workers.
Applications:
Interested applicants who fit the job criteria should submit resume, cover letter, and salary expectations to: jobs@onceinnovations.com
Salary/Benefits:
We offer a competitive compensation program; which includes a benefit package including medical, vacation and sick leave.
Equal Opportunity Employer
ONCE Innovations relies on dedicated teams of professionals who develop and maintain our global business operations, helping us identify trends and plan for the future. ONCE Innovations is committed to creating a diverse environment and is proud to be an equal opportunity employer. All qualified applicants will receive consideration for employment without regard to race, color, religion, gender, gender identity or expression, sexual orientation, national origin, genetics, disability, age, or veteran status.
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