Description:
A Foreign Exchange Company is looking for a Patent Attorney to join the IP legal group. In this role, you will collaborate closely with our innovative IP Team, technology experts, and external counsel. You will work at the intersection of tech and finance, and you will be part of a fast-paced business with the opportunity to collaborate, innovate, and provide strategic advice. The IP legal group supports many of the company's most innovative initiatives, including new products and services, research and development, and external partnerships and collaborations.In this role, you will:
- Manage all aspects of patent prosecution, including processing invention disclosures and determining an appropriate IP protection strategy.
- Oversee all aspects of patent prosecution by outside counsel, including quality of work, level of service, adherence to policies, policy exception requests, and syncing on current events and prosecution trends.
- Manage the strategy, volume, and quality of invention disclosures generated via mining sessions, directed inventing, inventor education, incentives, and objectives.
- Conduct patent training sessions for engineers in various technology areas
- Advise and update management on patent program strategy, initiatives, and goals
- Analyze the A Foreign Exchange Company patent portfolio to advise business teams and make maintenance and annuity fee decisions
- Conduct patent landscape studies to support discovery and early-stage R&D projects.
- Conduct due diligence reviews of IP-related documents in acquisition and investment transactions to identify and understand IP risks in proposed transactions, and participate in periodic project discussions with key stakeholders and other legal counterparts to track due diligence findings.
Minimum Requirements:
- J.D. from an accredited law school,
- Active license to practice law in a U.S. jurisdiction.
- Registration as a patent attorney with the U.S. Patent & Trademark Office.
- 1-3 years relevant experience in all aspects of patent prosecution practice.
- Solid understanding of patent law, in particular patent eligibility (35 USC 101), as applied to software.
- Degree in an engineering field or Computer Science, Mathematics, or Physics from an accredited university or college, or significant professional experience with software.
An ideal candidate also has:
- Knowledge of U.S. Patent and Trademark Office administrative practices
- Experience with a patent asset management system
- Professional experience in a technical field, e.g., as a software engineer.
- An understanding of financial markets and derivatives is preferred but not required.