Patent Attorney

THE ALFRED E MANN FOUNDATION FOR SCIENTIFIC R • Santa Clarita, CA

8d

About The Position

The successful candidate will develop and implement patent prosecution strategies to enable HMT to protect and expand its intellectual property assets.  S/he will (a) interface with technical staff to identify and develop ideas into robust invention disclosures and patent applications; (b) develop patent filing strategies to increase the value of HMT’s patent portfolios; (c) proactively identify intellectual property that needs further thought and development by technical and legal participants; and (d) work with in-house and outside counsel resources to evaluate the patentability of internally-generated inventions and assess IP aspects of the competitive landscape for individual projects.   The candidate will advise HMT senior leadership concerning patentability of inventions, infringement of patents, validity of patents, and other matters.

Requirements

• Registration to practice before the U.S. Patent & Trademark Office (USPTO) and admission to at least one State bar with the ability to register as in-house counsel in California.
• A JD degree and a Bachelor’s degree in Electrical Engineering or equivalent.
• 6+ years patent practice experience, law firm and in-house, preferably with implantable medical devices.
• Must have experience and ability to write effective US and PCT patent applications and to write effective responses to office actions from the USPTO.
• Ability to communicate effectively with engineers, scientists, business and legal professionals, vendors and consultants, and senior management.
• Ability to explain complex subjects with clarity and precision and to act decisively.
• Ability to develop effective working relationships in a collegial environment.
• Ability to be a team player and work collaboratively to obtain results.
• Ability to exercise discretion and sound judgment in decision-making, with limited supervision.
• To perform the job successfully, an individual in this role must have strong leadership skills and an ability successfully execute strategies in an interactive and open environment.

Responsibilities

• Support the development, direction, execution and management of Company’s intellectual property strategy.
• Counsel product development, research, and senior leadership teams on intellectual property matters.
• Identify potentially patentable subject matter.
• Assist in the generation of intellectual property by leading/facilitating routine brainstorming sessions with technical staff.
• Direct, principally through outside counsel, the preparation and prosecution of patent applications in the United States and globally.
• Review and analyze third party intellectual property to protect against infringement.
• Support business development activities, e.g., due diligence for potential new projects and structuring of intellectual property aspects of transactions.
• Support the drafting and review of license and other IP-related agreements, as well as IP provisions in other agreements.
• Other duties, as assigned.

What This Job Offers

• Job Type: Full-time
• Career Level: Mid Level