Patent Agent/attorney- Life Sciences

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Patent Agent/attorney- Life Sciences
The candidate will work directly with technology commercialization and business development professionals and inventors across the company enterprise to identify protectable aspects of new inventions, develop and implement patent prosecution strategies, build patent estates, draft and file patent applications, conduct examiner interviews, draft PTAB appeal briefs, respond to office actions, and other communications from the USPTO to ensure the successful issuance and maintenance of patents. Will proactively partner with professionals and inventors from across company to determine current and future patent needs and maintain a very close relationship with stakeholders across the enterprise to deliver highly-valued services. Assist company inventors in drafting and submitting New Technology Disclosures (NTDs) using our online Inventor Portal. Evaluate and communicate patentability of inventions submitted as NTDs; conduct searches of scientific journals and patent databases. Identify patentable inventions through regular interactions with research teams and collaborators, including evaluating inventions, conducting prior art searches, and generating and executing on corresponding patent protection strategies. Prepare and file patent applications and reply to communications from the USPTO during the patent application process. Represent The Research Foundation for company in court or before the USPTO Patent Trial and Appeal Board, as may be required from time to time. Work with foreign patent counsel and prepare letters of instruction to foreign counsel for filing and prosecution of foreign counterparts to US patent applications. Prepare and communicate legal opinions on patentability, validity, freedom to operate and infringement. Support dispute resolution, litigation and assertive licensing related to company patent properties. Review patent and patent application file histories; analyze various issues that arise during patent prosecution that could potentially impact downstream patent litigation; provide opinions on issues that arise during patent litigation. Assist in development, communication, and implementation of best practices for patent prosecutions, licensing and litigation. Collaborate with colleagues across the company enterprise to build patent estates around specific industry sectors and areas of interest, develop enterprise-wide licensing strategies including pooling or bundling to maximize the licensing opportunities for company-developed IP. Assist in drafting and negotiating IP-related sections of licensing and other contracts and documents, as needed. Monitor and analyze competitive intellectual property. Manage external counsel on outsourced patent preparation and prosecution matters. Mentor fellow employees about IP matters, conduct patent and trademark training sessions periodically, and collaborate across the enterprise, exercising judgment in resolving IP-related issues and helping to guide business and technology decisions, and helping to instill a pro-active approach through experience and foresight. Consult with the company Innovation Policy Board, periodically, as needed.

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