Patent Attorney

Description:

Overview:
The Patent Attorney will be responsible for managing An In-House Firm's global in-house prosecution practice for several technology areas, including drafting, filing, and prosecuting patent applications in the U.S. Patent & Trademark Office. Additionally, the Patent Attorney will lead and collaborate with An In-House Firm's U.S. and overseas development centers and with their global team of outside patent agents in the preparation and prosecution of U.S. patent applications overseas. The Patent Attorney will also have a hands-on role in teaming with An In-House Firm technology development groups to guide teams in mitigating technology risk during the development of An In-House Firm products. The ideal candidate will bring strong analytical and patent application drafting skills as well as team-leading and collaborative approaches to patent application preparation and risk management. This person will be responsible for identifying inventions, reviewing invention disclosures, drafting and prosecuting patent applications as well as managing the drafting of applications by others including outside agents. This person will also mentor other Patent Attorneys on the patent application drafting and prosecution process and communicate with inventors and engineering managers to optimize the patent prosecution process to achieve quality and cost objectives. Excellent patent application drafting, prosecution, communication and mentoring skills are needed for this lead position to work with inventors, team members, product management leads, and intellectual property professionals making up An In-House Firm's global prosecution and technology team.
Responsibilities:

• Interface with inventors and engineering managers to identify inventions precisely define inventive content.
• Coordinate and drive patent portfolio development strategies with An In-House Firm IP department colleagues.
• Prepare, file and prosecute patents in the USPTO.
• Ensure effective communications with Patent Examiners, using well reasoned arguments to timely advance domestic and international patent applications.
• Manage An In-House Firm technology group's global patent activity diligently.
• Craft validity and infringement opinions through self guided fact determination and analysis.
• Effectively communicate risk areas with product development partners to drive beneficial results.
• Multi-task effectively to provide coordinated support between related prosecution, development, and litigation activity.

Qualifications:

• Bachelor's Degree in Engineering or Science (preferably, Mechanical or Electro-Mechanical).
• Juris Doctor (JD) form a recognized US law school and an active State bar admission - Qualified to practice law in at least one U.S. jurisdiction.
• At least 5 years' experience in drafting and prosecuting U.S. patent applications, with demonstrated excellent writing skills.
• USPTO registration.
• Practical experience in design, development, or testing engineering environments is a plus.
• A sincere interest in technology and the development thereof.
• Demonstrated critical-thinking and problem-solving skills.
• Excellent written, verbal, and interpersonal communication skills.
• Successful communication style that is concise, persuasive, persistent and results-oriented.
• Salary range is $170,000 + up to 30% based on skills and experience level. This position is eligible for an annual corporate bonus based on company and individual performance.

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