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Patent Agent

Company: NYU Langone Health
Location: New York
Posted on: October 14, 2021

Job Description:

NYU Grossman School of Medicine is one of the nation's top-ranked medical schools. For 175 years, NYU Grossman School of Medicine has trained thousands of physicians and scientists who have helped to shape the course of medical history and enrich the lives of countless people. An integral part of NYU Langone Health, the Grossman School of Medicine at its core is committed to improving the human condition through medical education, scientific research, and direct patient care. For more information, go to med.nyu.edu, and interact with us on LinkedInGlassdoorIndeed, FacebookTwitter and Instagram.

Position Summary:
We have an exciting opportunity to join our team as a Patent Agent.

The Patent Agent manages activities related to the disclosure and protection of new inventions in chemistry and life sciences and the transfer of technology from the Medical Center and the University to the marketplace. This includes assessing the patentability of new invention disclosures from faculty, identifying relevant prior art, analyzing substantive correspondence such as office actions from the US Patent and Trademark Office, and creating and maintaining detailed intellectual property records.

Job Responsibilities:

  • Evaluate invention disclosures from faculty for patentability and copyright protection. Conduct prior art searches and summarize results in table and/or paragraph formats. Work with the Director, Intellectual Property, Senior Director, Life Sciences Technology Transfer, outside counsel, and inventor(s) to evaluate patentability of inventions.
  • Assist Director, Intellectual Property, Senior Director, Life Sciences Technology Transfer, and outside counsel in preparation and prosecution of patent applications, to ensure adequate claim scope to cover commercially important aspects of invention are protected.
  • Monitor and manage patent prosecution deadlines. Ensure that responses to communications and office actions from patent offices (US and foreign) are timely met without extensions.
  • Analyze and summarize office action rejections including any cited prior art (includes proposing arguments and/or claim amendments) and communicate to inventors, director, intellectual property, and senior director, life sciences technology transfer
  • Monitor deadlines and generate reports for patent maintenance fees and annuities and work with OIL business managers to ensure fees are paid timely. Maintain NYU online account for patent maintenance and annuity fees.
  • Prepare formal patent documents such as assignments. Prepare reports and presentations as needed by director, intellectual property.
  • Prepare and file federal copyright registrations.
  • Meet with researchers to learn of their research, make them aware of intellectual property considerations, and encourage invention disclosures.
  • Create and maintain claim charts within a particular patent case as well as within patent families. Create and maintain patent family trees.
  • Create and maintain detailed notes for each patent case in electronic database including data entry.
  • Research prosecution matters on PAIR (and also foreign patent databases) and internal intellectual property management database
  • Ensure compliance with government reporting requirements for use of federal funds supporting research that has given rise to inventions and/or creations including data entry to iEdison database
  • Remain abreast of changes to USPTO rules, current patent prosecution issues and trends.
  • Meet with researchers to learn of their research, make them aware of intellectual
    property considerations, and encourage invention disclosures
  • Adhere to medical center policies and behavioral standards

Minimum Qualifications:

  • To qualify you must have a Ph.D. degree in chemistry
  • Must be Registered U.S. Patent and Trademark Office Patent Agent (has taken and passed the patent bar examination and has good working understanding of patent process and procedures).
  • Experience with patenting process and patent prosecution in both chemistry and life sciences (e.g., pharmacology, biochemistry, biology, cell biology)
  • Excellent administrative, negotiating, interpersonal and communication skills necessary
  • Ability to work effectively with academic scientists to achieve consensus and promote good long-term relationships
  • Ability to work with tight deadlines and manage own caseload
  • Outstanding attention to detail and strong prioritization skills
  • Excellent written and oral communication skills
  • Drive and motivation to learn new material
  • Flexible, adaptable and efficient work practices
  • Advanced level of skill with Microsoft products such as Word, Excel, and Powerpoint and also online research tools
  • A technical writing sample is required.

Preferred Qualifications:
Strong technical background in both chemistry and the life sciences (e.g., pharmacology, biochemistry, biology, cell biology) with excellent academic credentials; post-doctoral research training or research experience is preferred. 

Qualified candidates must be able to effectively communicate with all levels of the organization.

NYU Grossman School of Medicine provides its staff with far more than just a place to work. Rather, we are an institution you can be proud of, an institution where you'll feel good about devoting your time and your talents.

NYU Grossman School of Medicine is an equal opportunity and affirmative action employer committed to diversity and inclusion in all aspects of recruiting and employment. All qualified individuals are encouraged to apply and will receive consideration without regard to race, color, gender, gender identity or expression, sex, sexual orientation, transgender status, gender dysphoria, national origin, age, religion, disability, military and veteran status, marital or parental status, citizenship status, genetic information or any other factor which cannot lawfully be used as a basis for an employment decision. We require applications to be completed online.

If you wish to view NYU Grossman School of Medicine's EEO policies, please click here. Please click here to view the Federal "EEO is the law" poster or visit https://www.dol.gov/ofccp/regs/compliance/posters/ofccpost.htm for more information. To view the Pay Transparency Notice, please click here.

Keywords: NYU Langone Health, New York , Patent Agent, Other , New York, New York

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