Senior Patent Agent ESF9189
Posted on :
05-07-2024
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1 Vacancy
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Job Description
- Company develops manufactures and distributes a wide range of life science reagents.
- world leader in biotechnology research and development
- Large established company with major global growth
- Work with a sharp energetic team
- Lucrative salary and great benefits
Job Title: Senior Patent Agent
Reports to: CSO / Head of R&D
How this role drives the company forward:
The Senior Patent Agent is responsible for leading IP reviews on both internal and external IP – proposing key actions and strategies to build strength in our core product IP including filing of new IP on developments coming out of R&D. The Senior Patent Agent takes the leading role manage the prosecution and maintenance of the Company’s patent portfolio through direction of outside counsel.
The Senior Patent Agent role is officebased in San Jose CA or may be hybrid for the right candidate.
How you will make an impact:
In this role you will drive forward the patent prosecution and maintenance for client . You will report directly to the CSO / Head of R&D providing invaluable guidance and recommendations with sound knowledge and strategy. You will influence the business of client. You will singlehandedly manage a full workload with comfort and ease.
What will you do:
- Primary responsibility for managing communications with outside counsel; taking the lead in providing guidance to counsel on the preparation and prosecution of domestic and foreign patent applications so as to best match claims to our products and strategy.
- Works with R&D to assess patentability of new inventions; assist in drafting and reviewing related invention disclosures and drafting provisional patent applications.
- Review and prepare freedomtooperate opinions on 3rd party IP in collaboration with outside counsel as necessary. Undertakes proactive reviews where necessary.
- Responsible for assigning products to relevant licenses for royalty reporting purposes.
- Actively guide senior management in evaluating licensing and business transactions based on review of relevant IP.
- Proposes strategies for developing the Company’s patent portfolio based on strong understanding of the Company’s technologies and those of its competitors.
- Provide periodic training to Company employees regarding the protection of intellectual property.
- Maintain knowledge of relevant laws regulations or statutes affecting the Company’s intellectual property.
- Proposes IP expenditure budgets based on agreed strategy. Assist in managing expenses to budget.
- This position may have supervisory responsibilities.
How will you get here
- A Ph.D. in a lifescience discipline required; molecular biology and NGS experience preferred.
- Must be a USPTO registered Patent Agent.
- A minimum of 6 years’ experience preparing and prosecuting patent applications and conducting patentability and freedomtooperate searches both at a law firm and within a company environment.
- Demonstrated ability to lead IP reviews with key internal stakeholders.
- Ability to suggest strategies for internal IP based on understanding of external IP and company’s technology position in the market.
- Skilled in preparing filing and prosecuting domestic and foreign patent applications.
- Strong advocacy skills in connection with patent prosecution.
- Proven ability to handle multiple projects and effectively manage priorities so as to meet tight deadlines.
- Independent and selfmotivated with a strong sense of urgency and ability to drive a project to completion.
- Excellent oral and written communication skills – must be able to communicate clearly both within the organization and externally to drive projects forward.
- Highly effective analytical and problemsolving skills including excellent attention to detail.
- Collaborative personality with strong interpersonal skills.
- Must be fluent in written and spoken English.
- Proficient in Microsoft Office including Excel and Word.
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Employment Type
Full Time
Key Skills
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