Intellectual Property Manager / Patent Agent

MONOSOL LLC • Chicago, IL

2d • Hybrid

About The Position

This position, highly visible within the growing technical team and the organization in general, supports the IP needs of MonoSol and reports to the Head of Intellectual Property. This person will have overall responsibility for the identification, assessment and protection of intellectual property, while serving as a liaison with inside/outside patent counsel, Business, Manufacturing and R&D organizations. This is an on-site/hybrid position and is based in Chicago, Illinois

Requirements

• B.S., M.S., or Ph.D. in Chemistry, Chemical Engineering, Polymers/material Science, or related technical field, preferred.
• Patent agent, registered to practice before the US Patent and Trademark Office, with in-house Corporate IP experience, preferred.
• 5+ years demonstrated R&D and IP portfolio management experience, including 5 years of experience as Patent Agent.
• Experience working with a cross-functional team to develop an R&D or IP strategy that supports a broader business strategy.
• Experience managing and working with external counsel on the preparation and prosecution of patent applications, both in the U.S. and abroad.
• Demonstrated technical writing skills and proven experience in drafting patents and claims.
• Proficiency in using patent databases and other related software.
• Excellent proficiency in computer skills, including familiarity with AI tools
• Strong analytical and problem-solving skills.
• A team player with strong verbal and written communication skills.
• Independent and energetic personality with the ability to multitask.
• Ability to travel both domestically and internationally.
• Ability to operate in the technical, management, and commercial arenas, and thrive in a fast-paced, open-thinking, corporate environment.

Responsibilities

• Assist Head of Intellectual Property in developing & executing intellectual property strategy.
• Manage patent portfolio resulting in broad protection of water-soluble/biodegradable formats/films based on polyvinyl alcohol and other materials.
• Draft and assist in drafting and prosecuting high-quality patent applications before the US Patent and Trademark Office.
• Assist in drafting of patents for filing in other outside US jurisdictions and responses to office actions, and collaborate with external counsel on managing prosecutions.
• Assist the Head of Intellectual Property in designing and managing internal patent databases and patent filing tracking systems.
• Perform prior art searching, patent landscaping, and draft a comprehensive analysis.
• Perform technical freedom-to-operate (FTO) analysis of proposed new products and manage third-party FTO inquiries.
• Manage third-party freedom-to-operate inquiries.
• Review invention disclosures and determine patent filing priorities with patent counsels.
• Manage external patent watch activities.
• Manage the trade secret process.
• Manage development and execution of the agreement process, as needed.
• Maintain up-to-date knowledge of changes in patent law and advise clients accordingly.
• Ensure all patent-related documentation and correspondence are properly maintained and updated.
• Collaborate with the internal technical team, business team, and external/internal counsels.

Benefits

• MonoSol provides a yearly incentive compensation bonus, a profit sharing bonus when eligible, a comprehensive benefits package including medical, dental, vision insurances, short term disability, long term disability, accidental death and dismemberment, term life insurance, voluntary term life insurance, transit flexible spending account (if applicable), employee assistance program, identity theft protection, 401k and paid time off (vacation and sick days).

What This Job Offers

• Job Type: Full-time
• Career Level: Manager
• Education Level: Ph.D. or professional degree