[Patent Asset Management / Services to in-house/outside clients] 60%
Advise in-house/outside clients regarding IP-related issues, including new developments in patent and trade secret laws and policies.
Provide assistance to clients with patent application process such as
Evaluate patentability of innovations
Prepare, draft and file patent applications
Handle Office Actions by preparing written responses, answering interviews, and filing with the USPTO (United States Patent and Trademark Office) necessary materials to further successful registration of contemplated patents
Conduct prior art database searches, evaluate third-party risk assessments, and patent trend analysis
Perform research and analysis and provide guidance on a variety of patent and IP-related issues including patent strategy.
Draft and/or review the IP clauses in business contracts.
Handle external communications with potential transactional partners or outside professionals/consultants in coordination with President/Sr. IP Counsel.
Engage with out-licensing functions to facilitate acquisition and monetization of IP.
[Patents and DRM (Digital Rights Management) Management] 30%
Act as a company representative in the partnerships (LLCs) activities to monitor each entity’s management.
[Team Development & Cooperation] 5%
Provide proper IP professional training to the team
Independently identify tasks and services reasonably necessary to maintain good relationships with in-house clients.
To perform limited administrative tasks necessary to properly render the duties described above, or direct administrative staff for that purpose.
Education & Experience:
Bachelor’s degree in the physical sciences or engineering
Registration with the USPTO
Patent prosecution and licensing practice in a corporate in-house IP department – at least 5 years
Ability to travel as job duty requires (2-4 trips to Northern CA and Portland, OR)
Flexibility to operate efficiently in a large multinational organization where internal clients are located both in Japan and the U.S.
Ability to quickly understand Clients’ needs and to advise proper actions under each given circumstance if involved risk or transaction is significant, but independently as to routine matters.
Japanese skill is a plus (Knowledge of Japanese as a second language or familiar knowledge and interest in business and culture involving Japan and Japanese organizations)