As part of NYU Langone Health, a world-class, patient-centered, integrated academic medical center, known for its excellence in clinical care, research, and education, NYU Grossman School of Medicine is currently seeking a Patent Agent to join our OSR-Industrial Liaison Office.
In this position, you will manage activities related to the disclosure and protection of new inventions in engineering, computer science, and physical sciences and the transfer of technology from the Medical Center and the University to the marketplace. This includes assessing the patentability of new invention disclosures from faculty, identifying relevant prior art, analyzing substantive correspondence such as Office Actions from the US Patent and Trademark Office, and creating and maintaining detailed intellectual property records.
- Adhere to Medical Center policies and behavioral standards
- Meet with researchers to learn of their research, make them aware of intellectual property considerations, and encourage invention disclosures
- Evaluate invention disclosures from faculty for patentability and copyright protection. Conduct prior art searches and summarize results in table and/or paragraph formats. Work with the Director, Intellectual Property, Director, Information Technology/Physical Sciences Technology Transfer, outside counsel, and inventor(s) to evaluate patentability of inventions
- Assist Director, Intellectual Property, Director, Information Technology/Physical Sciences Technology Transfer, and outside counsel in preparation and prosecution of patent applications, to ensure adequate claim scope to cover commercially important aspects of invention are protected
- Prepare formal patent document such as assignments. Prepare reports and presentations as needed by Director, Intellectual Property
- Prepare and file federal copyright registrations
- Monitor and manage patent prosecution deadlines. Ensure that responses to communications and office actions from patent offices (US and foreign) are timely met without extensions
- Analyze and summarize Office Action rejections including any cited prior art (includes proposing arguments and/or claim amendments) and communicate to inventors, Director, Intellectual Property, Director, and Information Technology/Physical Sciences Technology Transfer
- Create and maintain claim charts within a particular patent case as well as within patent families. Create and maintain patent family trees
- Create and maintain detailed notes for each patent case in electronic database including data entry
- Monitor deadlines and generate reports for patent maintenance fees and annuities and work with OIL Business Managers to ensure fees are timely paid. Maintain NYU online account for patent maintenance and annuity fees
- Research prosecution matters on PAIR (and also foreign patent databases) and internal intellectual property management database
- Ensure compliance with government reporting requirements for use of federal funds supporting research that has given rise to inventions and/or creations including data entry to iEdison database
- Remain abreast of changes to USPTO rules, current patent prosecution issues and trends
- Other duties as assigned
- 1-3 years experience either at a company or law firm.
- Masters degree in science or engineering required; Ph.D. is preferred; postdoctoral research training or research experience is preferred.
- Experience with patenting process and patent prosecution
- Excellent administrative, negotiating, interpersonal and communication skills necessary
- Ability to work effectively with academic scientists to achieve consensus and promote good long-term relationships
- Ability to work to tight deadlines and manage own caseload
- Outstanding attention to detail and strong prioritization skills
- Excellent written and verbal communication skills
- Advanced level of skill with Microsoft products such as Word, Excel, and PowerPoint and also online research tools
- A technical writing sample is required.
- Must be Registered U.S. Patent and Trademark Office Patent Agent (has taken and passed the patent bar examination and has good working understanding of patent process and procedures).
- Strong technical background in engineering, computer science, or a physical science with excellent academic credentials.
Interested candidates are asked to APPLY ONLINE.
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About NYU Grossman School of Medicine:
NYU Grossman School of Medicine is one of the nation’s top-ranked medical schools. For 175 years, NYU Grossman School of Medicine has trained thousands of physicians and scientists who have helped to shape the course of medical history and enrich the lives of countless people. An integral part of NYU Langone Health, the Grossman School of Medicine at its core is committed to improving the human condition through medical education, scientific research, and direct patient care.
EOE including Disabled and Vets VEVRAA Federal Contractor.
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