Description:

What you will do:
As our Patent Agent, you will be a key member of An American Multinational Medical Technologies Corporation Intellectual Property team and the Endoscopy Division. You will report to and collaborate with the Endoscopy Division's IP Legal Team. You will provide patent-related expertise and support to the team, to the Division's Senior IP Counsel, and to each of business units at the Division, with a particular emphasis on the Sports Medicine business unit. The role is responsible for assisting the Endoscopy Division, and in particular the Sports Medicine business unit, in building its patent portfolio by significantly increasing the number of patent application filings, working closely with the Endoscopy Division's IP Legal team, with a focus on enabling technologies and AI/ML, and assisting with mitigating legal risk. This is a hybrid role which is defined by working 3 days per week onsite.

Additionally you will:

Work with the Division's Senior IP Counsel, the IP Legal Team, and Business Unit R&D teams to validate identified patenting opportunities.
Review invention disclosures for patentability, and work with R&D team members on supplementing and expanding the disclosures.
Conduct prior art 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 legal risk 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 to ensure such applications are aligned with IP and business technology strategies, and that the subject matter in the patent applications is sufficiently developed in accordance with patent law in a particular jurisdiction (e.g., Europe).
Assist external counsel with the prosecution of patent applications in various jurisdictions, including review and drafting of responses to office actions, with a view of achieving commercially and strategically relevant claims scope.
Prepare and lead annuity, portfolio metrics and competitive intelligence reviews with the business.
Assist the Division's Senior IP Counsel and the IP Legal Team in preparing for and running Patent Review Board meetings.
Conduct patent searching and review, as requested, as part of the freedom-to-operate (FTO) process and track important deadlines relating to the same; coordinate with R&D teams to provide supporting materials; coordinate with outside counsel to organize FTO-related meetings.
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 across the Division.

What You Need:

Bachelor of Science degree in software engineering, electrical engineering, mechanical engineering, biomedical engineering, computer science is mandatory for this role.
Registered to practice before the U.S. Patent & Trademark Office is needed for a qualified candidate.
Minimum of 8 years relevant experience (e.g., law firm and/or in-house IP experience).
Minimum of 3 years of experience in drafting, prosecuting, and managing patent applications, and FTO work.
Demonstrated experience with building a patent portfolio and assisting counsel with FTO activities, including FTO activities relating to software and AI/ML technologies.
Demonstrated ability relating to critical thinking, creativity, and project management, with attention to detail and client follow-up.
Ability to meet tight deadlines on multiple projects 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 and effectively manage one's competing priorities.
Demonstrates and drives a commitment to integrity and accountability.
Maintains highly sensitive and confidential information.