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Confidential: Patent Agent
Job Details
Position Type: |
Legal |
Employment Type: |
Full Time |
Job Description: |
Our client is a venture-funded technology start-up focused on nanoenergetics, nanochromics, nanominerals and nanomaterials. The Company is currently developing products for billion-dollar market applications harnessing the powerful capabilities of nanotechnology. Our client has excellent opportunity for a Patent Agent. This position is responsible for patent preparation, prosecution, defense and maintenance in connection with the business. Seeking bright, motivated innovative individuals to join their dynamic team. Our client provides a rewarding, collaborative work environment where creativity and teamwork are valued ingredients for success.
Responsibilities:
Specific duties of this role will include:
· Evaluate invention disclosures and develop patent drafts with claims of appropriate scope. prepare and prosecute patent applications; manage patent dockets
· Determine business priority, arrange for patent clearance searches, analyze search report and evaluate freedom to operate and patent validity.
· Review relevant third party patents/patent publications; work with outside legal counsel to initiate third party observations or oppositions for patents/patent applications.
· Prepare voluntary claim amendments, office-action responses, re-examination requests and/or appeal briefs as required for pending patent applications in a way that avoids extensions of time and added cost.
· Review patent dockets with each business segment periodically and identify patent
· s and pending patent applications that do not provide business value.
· Take all new inventions through the discussion of filing patents vs. trade secret vs. public disclosure and establish business support
· Ability to assist inventors and prepare invention disclosures, conduct inventor interviews; harvest new ideas/disclosures
· Detailed patent research and continuous updates and filings.
· Assist executive management in ensuring alignment of business strategy, technical direction, and IP strategy
· Work on domestic and international applications.
· Manage the quality of U. S. patent applications prepared and prosecuted by outside counsel.
· Will conduct patentability studies for new product introductions, work with marketing, engineering and patent evaluation units to make filing decisions maximizing the scope of patent protection reflective of business strategic goals and work with outside counsel to assure all patents filed and prosecuted by outside counsel will contain claims of the broadest possible scope and will withstand judicial scrutiny in litigation.
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Job Requirements: |
Qualifications:
· 5+ years experience in preparation of US and foreign patent applications in the field of organic chemistry.
· Experience in drafting and prosecuting U. S. patent applications in Materials Chemistry.
· Minimum of five years of patent prosecution experience either in-house or within law firm.
· Detailed knowledge of US PCT and EPO intellectual property rules of practice and procedure.
· Excellent verbal and written communication skills.
· Teamwork and good interpersonal skills.
· Bachelor's degree in Chemistry required, Ph. D. degree in Organic Chemistry or related discipline preferred.
· The successful candidate must be registered to practice before the U.S. Patent Trademark Office.
· Must have demonstrated expertise understanding U. S. patent laws and regulations and of United States Patent and Trademark Office practices and procedures and a working knowledge of national and regional laws, rules and regulations.
· Must also have demonstrated and significant experience in handling a wide variety of patent procurement matters including reviewing invention disclosures, making well reasoned patent applications filing decisions, preparing and filing patent applications, appealing adverse patentability decisions and initiating and assisting in interference and opposition matters.
· Should have outstanding technical and writing skills; strong interpersonal skills including the ability to communicate effectively and concisely and work with engineers and inventors and all levels of management.
Experience in the technical field of nanomaterials polymers and related chemical intermediates preferred
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Extra Information: |
Our client offers highly competitive compensation and benefits packages including 401k and options. Relocation assistance will be provided.
Please send resumes to jobs@avant-tech.com; Fax: 412-567-2081
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Job Placement Categories
Science: |
Materials Science, Chemistry |
Industries: |
Materials, Chemical |
Technologies: |
Nanomagnetics, Nanocoatings, Nanoporous materials, Nanoparticles, Nanocrystaline materials |
Location
City: |
Pittsburgh |
State: |
PENNSYLVANIA |
Country: |
United States |
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