This person will be an essential member of a small international group of attorneys, patent agents and support personnel responsible for intellectual property matters for the Chromatography and Mass Spectrometry Division of Thermo Fisher Scientific. Principal activities and tasks include the following:
- Securing patent protection for inventions developed at Thermo Fisher Scientific.
- Draft patent applications relating to mass spectrometry and liquid chromatography technologies for U.S. and international filing
- Prepare office action responses, appeal briefs and other prosecution-related documents
- Work with management, R&D and marketing organizations at a range of US and international sites to develop, assess and protect IP.
- Actively oversee the work of external counsel in connection with U.S. and foreign patent preparation and prosecution.
- Search and review prior art references to assess invention disclosures for patentability
- Advising and educating internal clients regarding patent-related issues, including new developments in laws and policies
- Providing support for patent assertion, defense and litigation matters
- Identify and analyze patents in connection with infringement and validity studies
- Work with R&D personnel to collect relevant technical information
- At least a bachelor’s degree (or equivalent) in physical sciences or engineering; advanced degree preferred.
- USPTO patent agent registration
- Minimum three years hands-on U.S. patent preparation and prosecution experience in law firm or in-house corporate setting
- Demonstrated experience with international patent prosecution activities, particularly in the EPO
- Strong knowledge of scientific instrumentation (preferably mass spectrometry and chromatography); industry experience a plus
- Office position based in San Jose, requiring up to 5% travel within US and Europe.
Thermo Fisher Scientific Inc. (NYSE: TMO) is the world leader in serving science, with revenues of $17 billion and approximately 50,000...