Job Description
In-House Patent Agent
JOB DESCRIPTION:
The in-house patent agent contributes to the creation and management of the
company’s patent portfolio.
The position unites a command of electrical engineering fundamentals with an
understanding of the patent process to produce high quality patent applications
and to make recommendations for strategic business decisions.
As part of the patent team, the in-house patent agent contributes to the
company’s patent portfolio. The role includes preparing, drafting and prosecuting
domestic and foreign patent applications either directly with the USPTO or with
outside counsel. Specific responsibilities include writing patent specifications
and claims, producing drawings for patent applications, organizing and analyzing
submissions of new ideas, prosecuting patent applications with the USPTO, and
providing technical support for patent prosecution when working with outside
counsel.
The work involves interaction with engineers to receive and process new ideas
into patent applications and to identify technologies which are candidates for
patent protection.
The ideal candidate will be able to have technical discussions at a peer level with
inventors and to conduct interviews with patent examiners at the USPTO.
Responsibilities may also include working with paralegals and administrative
support to file patent applications and any necessary paperwork related to
prosecution directly with the USPTO.
Additional responsibilities include ongoing analysis of the patent portfolio to
assess costs and benefits. As part of the patent team, the in-house patent agent
participates at regular meetings with executive management to provide
information and recommendations for strategic business decisions.
REQUIREMENTS/EXPERIENCE:
1. BS, MS, or Ph.D. in electrical engineering or related technical field, with
demonstrated competence in the theory and application of analog electronic
circuits.
2. Registered with the United States Patent and Trademark Office, with minimum
3 years of experience with patent prosecution.
3. Highly developed technical writing and editing skills that include a superior
command of the English language.
4. Experience in composition of patent applications is ideal. Other applicable
experience includes writing and editing articles for technical journals.
5. Proficient in use of software tools such as Visio, Word, Excel, and PowerPoint
to prepare documents with drawings, images, and text.
6. Experience with Patent Center and electronic docketing systems, such as
Foundation IP is a valuable asset.
7. Experience in the construction and evaluation of circuits in the laboratory is
desirable.