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Job Title	Patent Agent
Department	Legal
Reports To	Director of Legal Affairs
Location	Roanoke, VA
Status	Exempt

 

 

 

DUTIES AND RESPONSIBILITIES:

General Description

We are seeking a motivated IP professional to assist in the continued development and implementation of PixelOptics’ patent strategy, as well as to identify and pursue valuable intellectual property generated in a dynamic research and development environment. The position also involves conducting patent freedom to operate, landscape, validity, and due diligence analyses. This position will report to the Director of Legal Affairs, and will be a pivotal link between the R&D, Business Development, and Legal teams. The position requires an individual with strong legal skills and extensive experience in preparing patent applications and in prosecution, as well as a degree or equivalent experience in electrical engineering and optics, or polymer chemistry. Highly preferred is experience in the optical or consumer electronics industry.

Responsibilities: 

 

·         File and prosecute US patent applications, including drafting applications, drawings, figures, sequence listings, formal documents, and Office Action responses. 

·         With foreign patent counsel, develop strategy and prepare applications and responses for foreign patent applications.

·         Work closely with Business Development, Product Management, and R&D to support mining and drafting of invention disclosures.

·         Work closely with the Director of Legal Affairs, management team, and outside counsel, to develop, support and execute a strategy to proactively strengthen PixelOptics’ IP portfolio. 

·         Support the preparation of IP-related legal opinions on issues such as freedom to operate, infringement, and validity, as well as perform landscape analyses. 

·         Support patent-related due diligence for commercial transactions, such as collaborations and licensing; and act as a liaison between the Intellectual Property, Business Development, management, and R&D teams to regularly provide updates on Pixel’s patent portfolio.

·         Review and approve publications/presentations to prevent disclosure of confidential information.

·         Maintain a detailed understanding of Pixel’s products and technical developments, as well as the patent and technology status of competitors and potential competitors.

·         Work with the Director of Legal Affairs to refine and enforce IP policy within PixelOptics.

Education/Experience:

Must be registered to practice before the U.S. Patent & Trademark Office. Bachelors degree in a science discipline and at least 5 years patent drafting and prosecution experience required. Advanced degree and major in electrical engineering, polymer chemistry with a concentration in optics or optical engineering.

 

Critical Competencies:

·         Minimum of 5 years of experience in the prosecution of patents before the U.S. Patent & Trademark Office, as well as developing strategies for filings and prosecution of foreign patent applications.

·         Must have experience in analyzing the patentability of inventions and validity of patents, including the preparation of patent applications, opinions, and the drafting of U.S. patent applications.

·         Experience with patent appeals, re-examination, re-issue, and interference proceedings is a plus.

·         Experience in intellectual property litigation is a plus, including experience investigating infringement by third parties and interfacing with outside counsel.

·         Transactional and contract experience preferred, particularly as it relates to protection of intellectual property and due diligence.

·         Practical laboratory experience in a related field is strongly preferred.

·         Record of providing legal services in a timely, accurate, and professional manner.

·         Highly motivated, with the ability to proactively organize a heavy workload and demonstrate excellent analytical abilities.

·         Excellent interpersonal skills with the ability to relate comfortably at all levels and with all departments.

·         Flexible and proactive approach to problems and demands, with the ability to thrive on challenge and react quickly and positively to a fast-moving and challenging environment.

·         Strong written and verbal communication and interpersonal skills.

·         Proficiency in patent docketing systems; working knowledge of CPI is preferred.
Proficiency in Microsoft Office (Word, Excel, PowerPoint, and Outlook) is essential.

Compensation:

Competitive base and bonus based on experience; excellent benefits package.


PixelOptics is an Equal Opportunity Employer.

 

 

  Submit your Resume and Cover Letter to:

humanresources@pixeloptics.com