s Patent Agent position requires the performance of complex, substantive and organizational support primarily in the patent area. The scope and responsibilities of the position include providing intellectual property services to Virent, focusing on internal patent application preparation and prosecution, and prior art reviews and analysis to assess novelty and freedom to operate issues, both foreign and domestic. The Patent Agent will report to the Vice President of Legal Affairs and will coordinate with inventors and other appropriate management to keep them informed as to the status of pending intellectual property matters. The intellectual properties of Virent are extremely valuable assets and include patents, trademarks, copyrights and trade secrets.
Essential Technical Responsibilities and Duties
Education and Experience Requirements
- Communicates with inventors, R&D managers, project managers, product managers and executive management.
- Receives inventions disclosures and coordinates and assists with invention review meetings.
- Documents trade secrets and assists in the compliance with Virent’s intellectual property policies.
- Prepare drafts of patent applications and documents related to patent applications, which includes conducting background searches and searches for similar inventions; drafting the specifications and preparing reference figures and providing technical expertise throughout the application process.
- Responds to attorney and inventor inquiries regarding patent application preparation and filing strategy, and patent application prosecution strategy.
- Analyze assigned patent office actions and prior art from the USPTO and foreign offices to determine response strategy.
- Organize, maintain, and update files and docket information related to Virent’s IP portfolio.
- Conducts prior art searches and assists with patentability, freedom-to-operate, infringement and validity analyses, including the cataloging and maintaining of results in an organized and accessible fashion.
- Assists in managing intellectual property relationships in connection with licensing, joint development and research collaboration relationships.
- Assists in research relating to intellectual property licensing issues as they arise.
- Assists in the review and approval of publications/presentations to prevent disclosure of confidential information.
- Compile, organize, and maintain resource materials.
- Assist attorneys in patent litigation matters.
The candidate must have a 4 year BS/BA or higher in the chemical or chemical engineering field, or equivalent relatable experience; advanced degree preferred.
The candidate must be registered to practice before the USPTO, and have 2+ years of Patent Agent experience with an emphasis on invention disclosures, patent specifications and claims. -and-2-5 years of experience in the catalysis, chemical engineering or industrial chemical field would be highly preferred.
- Previous law firm or in house legal department experience is strongly preferred.
- Working knowledge of USPTO and PCT patent practice.
- Technical and analytical skills necessary to conduct complex and detailed analysis of patent-related matters.
- Interpersonal skills necessary to communicate with a diverse group of researchers, attorneys and other partners.
- Strong communication and interpersonal skills and work well in a team environment.
- Self-starter, highly organized, and detail oriented.
- Requires minimal supervision; ability to work with minimal direction
Virent - 22 months ago