Patent Counsel | Contract to Hire
Position Overview
My client's Intellectual Property department is expanding, and they are seeking a highly skilled, detail-oriented Patent Agent or Patent Attorney to join the team on a contract basis, with the potential to convert to full-time employment. The successful candidate will play a critical role in securing and strengthening intellectual property protection for innovative technologies in the rapidly growing battery market.
This role involves navigating complex domestic and international IP landscapes, collaborating closely with inventors and business stakeholders, and ensuring compliance with applicable regulations. The position offers a hybrid work environment, including remote flexibility, and the opportunity to work with a dynamic, international team of inventors and legal professionals in a fast-growing and lucrative industry.
Key Responsibilities
Patent Preparation and Filing
- Draft, review, and file high-quality patent applications, including provisional, non-provisional, and international (PCT) filings.
- Ensure all submissions comply with applicable patent office rules and requirements.
Patent Prosecution
- Communicate with patent examiners and assist in responding to office actions.
- Strategically negotiate claim scope to maximize patent protection and enforceability.
IP Portfolio Management
- Support the development and execution of IP strategy across the company's portfolio.
- Track deadlines, maintain records, and manage correspondence to ensure timely and accurate responses.
Prior Art and IP Analysis
- Conduct patentability searches, freedom-to-operate analyses, and IP due diligence reviews.
- Analyze competitive patent landscapes and emerging technologies.
Collaboration and Strategic Guidance
- Work closely with inventors and technical teams to understand innovations and translate them into strong IP assets.
- Provide practical, business-aligned guidance on IP strategy and risk.
Trademarks
- Assist with trademark prosecution, portfolio maintenance, and enforcement matters.
Compliance
- Ensure all IP-related activities comply with U.S. and international IP laws, regulations, and best practices.
Legal and Litigation Support
- Provide support in IP litigation and dispute matters, including reviewing and analyzing patents for potential infringement or invalidity positions.
FAQs
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