Description:
Job Summary:The Patent Agent interviews inventors, conducts patent harvesting sessions, and prepares and prosecutes patent applications before the United States Patent & Trademark Office (USPTO), including conducting interviews with patent examiners and drafting claim amendments. The Patent Agent provides direction and guidance on patent strategy, action planning, and communication with clients, business units, and other areas of Law and Regulation.
Key Responsibilities:
- Manage patent prosecution docket, including preparation and prosecution of high-quality patent applications
- Execute at a high-level all aspects of patent prosecution including drafting and filing office action responses, preparing claim amendments, conducting examiner interviews, providing direction and guidance on patent prosecution strategy, and obtaining allowance of high-quality patent coverage
- Evaluate the patentability of company innovations, conduct patent harvesting sessions and interview inventors in support of patent prosecution strategy
- Develop and counsel business partners on strategies for protecting company innovations through patents
- Work closely with and advise business partners, clients, and attorneys in legal department
Supervisory Responsibilities:
This job does not have supervisory duties.
Education and Experience:
- 4 year Bachelors Degree (Required)
- 5 or more years of experience (Preferred)
- In lieu of the above education requirements, an equivalent combination of education and experience may be considered.
Certificates, Licenses, Registrations:
Registered as a Patent Agent and admitted to practice before the United States Patent & Trademark Office (Required)
Functional Skills:
- Experienced at patent drafting and prosecution at a law firm or technology company with preferences in electrical engineering, computer science, mechanical engineering, physics & patent prosecution experience in machine learning, AI, software, telematics, sensors and/or insurance
- Strong technical background and familiarity with both hardware and software
- Proficient written and oral communication skills with the ability to simply complex information
- Analytical thinker with strong conceptual and research skills
- Natural leader who displays sound judgement and attention to detail
- Ability to work under pressure and meet deadlines
- Ability to work independently and as part of a team