Patent Agent - Life Sciences

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Patent Agent - Life Sciences
The candidate will be responsible for: Assist SUNY inventors in drafting and submitting New Technology Disclosures (NTDs) using RF's online Inventor Portal. Evaluate and communicate patentability of inventions submitted as NTDs; conduct searches of scientific journals and patent databases. Identify patentable inventions through regular interactions with research teams and collaborators, including evaluating inventions, conducting prior art searches, and generating and executing on corresponding patent protection strategies. Prepare and file patent applications and reply to communications from the USPTO during the patent application process. Represent RF in court or before the USPTO Patent Trial and Appeal Board, as may be required from time to time. Work with foreign patent counsel and prepare letters of instruction to foreign counsel for filing and prosecution of foreign counterparts to US patent applications. Prepare and communicate legal opinions on patentability, validity, freedom to operate, and infringement. Support dispute resolution, litigation, and assertive licensing related to SUNY patent properties. Review patent and patent application file histories; analyze various issues that arise during patent prosecution that could potentially impact downstream patent litigation; provide opinions on issues that arise during patent litigation. Assist in development, communication, and implementation of best practices for patent prosecutions, licensing, and litigation. Collaborate with colleagues across the SUNY enterprise to build patent estates around specific industry sectors and areas of interest, develop enterprise-wide licensing strategies including pooling or bundling to maximize the licensing opportunities for SUNY-developed intellectual property. Assist in drafting and negotiating intellectual property-related sections of licensing and other contracts and documents, as needed. Monitor and analyze competitive intellectual property. Manage external counsel on outsourced patent preparation and prosecution matters. Mentor fellow employees about intellectual property matters, conduct patent and trademark training sessions periodically, and collaborate across the enterprise, exercising judgment in resolving intellectual property-related issues and helping to guide business and technology decisions, and helping to instill a pro-active approach through experience and foresight. Consult with the SUNY Innovation Policy Board, periodically, as needed.

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