Date Posted
10/19/2021
Location
Torrance, CA
Salary Range
$80,000.00 - $100,000.00
[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.
[Administrative] 5%
  • 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
Requirements:
  • 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)