Description:
We are seeking a highly skilled and detail-oriented Patent Attorney to join our team. This role will focus on protecting and managing the company's intellectual property assets, and partnering closely with R&D, product development, and business teams. The Patent Attorney will be responsible for drafting and prosecuting patent applications, advising on patent strategy, and ensuring that our innovations are safeguarded in a competitive market.Key Responsibilities:
- Trusted Advisor: Partner with engineers, scientists, and product teams to identify inventions and assess patentability.
- Patents: Draft, file, and prosecute patent applications in the U.S. and manage their international counterparts. This includes drafting and/or supporting office action responses and other prosecution actions, foreign and domestic. Manage and grow the company's global patent portfolio, ensuring alignment across affiliates and business units.
- Freedom to Operate (FTO) and Prior Art Searches: Perform and assess FTOs and prior art searches to assess whether an invention is new and unique, and to support product development and launches.
- Legal Opinions: Provide legal opinions on patent infringement, validity, and enforceability.
- Contracts: Draft, review, and negotiate intellectual property related agreements, including but not limited to licensing and collaborations.
- Export Administration Regulation (EAR) Assessments: Perform EAR analyses and other regulatory screenings to evaluate export control implications of technologies and inventions. The candidate will be trained in-house.
- Outside Counsel: Manage and cautiously use outside counsel on complex filings, oppositions, and disputes.
- Bachelor of Science or equivalent in a science or technology related discipline from an accredited school or university (required).
- Master of Science or equivalent in a science or technology related discipline from an accredited school or university (preferred).
- Juris Doctor from an accredited law school (required).
- Admission to practice law in at least one U.S. state bar (required).
- Admission to the USPTO Patent Bar (required).
- Minimum of 2 years of experience drafting and prosecuting patent applications in various technical fields.
- Strong technical background in at least one of engineering, material sciences, biological sciences, physics, chemistry or related fields.
- Strong attention to detail and time management skills.
- Excellent analytical and problem-solving abilities.
- Exceptional communication and interpersonal skills with all levels in the organization.
- Bilingual in English and Japanese preferred.