Job Description:
Position: Patent Associate / Agent I
Company: Nitto Denko Technical Corp - Oceanside, CA
Reporting To: Patent Attorney/Patent Agent
Position Objective: Become and active integrated member of the Nitto Denko Technical (NDT) Intellectual Property (IP) department in by supporting intellectual property related activities under the supervision of the Patent Attorney. Tasks include support of patent drafting and resolution of patent related issues and support of development activities to addressing general in-house counsel related issues as well as issues related to intellectual property. Work as part of a closely integrated IP team advising scientists, other company counsel, vice-presidents, and the president, on IP matters.
Major Job Functions:
Independently draft patent applications for patent attorney review and approval. Execute prior art searches to support patent drafting activities. Constructively review and comment on other patent applications during different phases of prosecution. Draft and/or support office action responses and other prosecution actions, foreign and domestic.
Perform technology surveys to support development areas. Responsibilities include searching art in response to scientists’ queries, providing feedback to scientists to shape development activities.
Perform Export Administration Regulation assessments regarding current and/or future technical performance prior to possible regulation subject activity as necessary.
Direct, coordinate, and optimize work with outside counsel and other business units. Review intellectual property agreements and provide feedback on legal ramifications to supervising counsel as well as key stakeholders. Monitor the intellectual property docket and support patent prosecution activities by coordinating completion of patent prosecution tasks by stakeholders and inventors.
Education, Licensure and/or Experience:
• Must have sufficient education and/or training to be able to meet the scientific and technical training requirements for admission to the Examination for Registration to Practice in Patent Cases before the United States Patent and Trademark Office (i.e., Patent Bar).
• Bar licensure or recent passage of Bar Examination, if Bar licensure, preferred ability to practice law in California.
• Strong interpersonal skills with the ability to articulate legal positions with other members of the company.
• Strong Microsoft Office skills including the use of Microsoft Word, Excel and /or Powerpoint
Preferred Qualifications:
• Preferred technical education is at least: (1) Masters of Science or equivalent in a science or technology related discipline from an accredited school or university or (2) Bachelors of Science or equivalent in a science or technology related discipline from an accredited school or university with 2-3 years of practical experience in a related field. Science or technology related disciplines should be in engineering, material sciences, biological sciences, physics, chemistry, or related fields.
• Preferred to have taken Intellectual Property, Patent Law, Patent Prosecution, or related course in law school with a passing score.
• Preferred admission as a patent attorney or patent agent before the United States Patent and Trademark Office.
Physical Job Requirements:
This occupation setting can be in a remote office environment. While performing the duties of this job, the employee may regularly operate a computer keyboard, mouse, and telephone keypad. Job duties may also involve writing. Specific vision abilities required by this job include ability to able to read electronic documents.
Disclaimer: This job description reflects management’s assignment of essential job duties; and nothing in this herein restricts management’s right to assign or reassign duties and responsibilities to this job at any time.
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