Patent Agent

Document Control | Santa Ana, CA

Job Function:

We are hiring a Patent Agent. This is an incredible opportunity for a Patent Agent to lead and support all patent activity within FUJIFILM Irvine Scientific. In this role, you will be focused on supporting FUJIFILM Irvine Scientific’s patent applications, searching prior arts for freedom-to-operate and patentability analyses, and ensuring our Company’s existing patents are not infringed upon. We are also looking for the person to be an effective communicator and capable of initiating and leading discussions with the R&D group and other technical people and mine and draw out invention disclosures.

Job Duties:

  • Coordinate Patent Application Activity
  • Act as Project Leader to identify and review potentially patentable features of new products
  • Lead departmental meetings regarding patent approvals, applications, processes
  • Coordinate with corporate legal department regarding patent filings and office actions and work closely with outside patent counsel as necessary
  • Maintain a database of patent applications and coordinate the distribution of employee patent awards
  • Coordinate patent clearances; review new features and new technologies or methods to determine criteria of patent clearance, and collaborate with corporate legal department and outside patent counsel as necessary
  • Work closely with technical personnel to review and evaluate patents and assist in the preparation of reports
  • Patent education; provide patent training and education to technical staff as necessary
  • Maintain patent assessment database / system management; including surveillance and clearance activities
  • Conduct prior art searches for patentability, surveillance and freedom to operate analyses
  • Analyze patent claims and documents for clearance and patentability purposes
  • Prepare patent applications
  • Work with technical staff to prepare invention disclosures and assist with patent prosecution matters
  • Carry out patent mining activities with business and project teams to identify and articulate opportunities for patent protection
  • Serve as a resource on patent matters

Experience/Education:

  • Bachelor’s degree, Master’s degree, or Ph.D. in Life Science, Cell Biology, Biochemistry, Biology, Chemistry, Biotechnology, Molecular Biology, Biomedical Engineering, or equivalent
  • Bachelor’s degree with at least 5 years, or Master’s degree with at least 2 years, of Intellectual Property (IP) experience in-house at a life sciences, medical device, biotechnology, diagnostic, pharmaceutical, law firm or in a similar capacity
  • Patent Agent registered with USPTO is a plus
  • Experience in medical device is a plus
  • Strong verbal and written communication skills with professional presence
  • Proficiency with U.S. Patent Office Electronic Business Center systems (EFS Web and PAIR)
  • Understanding of U.S. and foreign patent laws
  • Experience in performing clearance/non-infringement searches and analysis

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Principals only. No recruiters please.

FUJIFILM Irvine Scientific is an equal opportunity employer. All qualified candidates will receive consideration for employment without regard to race, color, religion, sex including sexual orientation and gender identity, national origin, disability, protected Veteran status, or any other characteristic protected by applicable federal, state, or local law.

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