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Patent Agent/Attorney- Life Sciences at SUNY

 

About The Research Foundation for SUNY:

The Research Foundation for The State University of New York (RF) is the largest comprehensive university-connected research foundation in the country.

Our mission is to provide talent, services, and technology that empower SUNY to research, innovate, and transfer discoveries that transform the world’s knowledge economy.

Our vision is to make SUNY the best place for faculty, students and staff to research, innovate, and solve the world’s most pressing problems.

The RF serves SUNY by providing essential administrative services that enable SUNY faculty to focus their efforts on the education of students and the performance of life-changing research across a wide range of disciplines including medicine, engineering, physical sciences, energy, computer science, and social sciences. We work with the academic and business leadership of SUNY campuses to support research and discovery through the administration of sponsored projects and technology transfer and management of intellectual property for public benefit and economic growth.

The RF is committed to diversity, inclusion and a working environment that enhances productivity, creates personal and professional opportunities, unleashes everyone’s full potential and fuels innovation. We hold the organization and each other to the highest standards of integrity, accountability and ethical behavior.

Visit www.rfsuny.org and connect with the us on Facebook, Twitter and LinkedIn. Learn about SUNY at www.suny.edu.

ADDITIONAL CENTRAL OFFICE EMPLOYEE BENEFITS

As a learning organization, the RF encourages all employees to continue to grow and develop professionally.  At the RF Central Office, employees are offered many opportunities for learning and development, including Professional Development Planning, a 12-month Mentoring Program, Tuition Reimbursement, Job Rotation, DiSC Profile Behavioral Assessment, Employee Engagement Teams, Job Skills Training, and an Employee Wellbeing Team.

Job Description:

FUNCTION & SCOPE:

The Research Foundation for the State University of New York (RFSUNY) seeks a licensed United States Patent Attorney or Patent Agent with a technical background in a life science field, including but not limited to biochemistry, chemistry, or pharmacology to join the Office of Industry and External Affairs (I&EA) team based in Albany, New York.

This position will work directly with technology commercialization and business development professionals and inventors across the SUNY enterprise to identify protectable aspects of new inventions, develop and implement patent prosecution strategies, build patent estates, draft and file patent applications, conduct examiner interviews, draft PTAB appeal briefs, respond to office actions, and other communications from the USPTO to ensure the successful issuance and maintenance of patents. You will proactively partner with professionals and inventors from across SUNY to determine current and future patent needs and maintain a very close relationship with stakeholders across the enterprise to deliver highly-valued services.

A focus of the I&EA team is moving SUNY technology to market. Through direct, daily interaction with technology commercialization professionals across the enterprise, faculty, small and large businesses, and venture investors, we build strong relationships and enter into agreements to translate academic discoveries into commercial products that benefit society, impact public health, and improve quality of life. If you are a business-minded individual who is self-motivated, curious, enthusiastic about technology, outgoing, enjoys work, continually being challenged, and engaging deeply with inventors, then this is a great opportunity for you.

DUTIES:

  • Assist SUNY inventors in drafting and submitting New Technology Disclosures (NTDs) using our online Inventor Portal.
  • Evaluate and communicate patentability of inventions submitted as NTDs; conduct searches of scientific journals and patent databases.
  • Identify patentable inventions through regular interactions with research teams and collaborators, including evaluating inventions, conducting prior art searches, and generating and executing on corresponding patent protection strategies.
  • Prepare and file patent applications and reply to communications from the USPTO during the patent application process.
  • Represent The Research Foundation for SUNY in court or before the USPTO Patent Trial and Appeal Board, as may be required from time to time.
  • Work with foreign patent counsel and prepare letters of instruction to foreign counsel for filing and prosecution of foreign counterparts to US patent applications.
  •  Prepare and communicate legal opinions on patentability, validity, freedom to operate and infringement.
  • Support dispute resolution, litigation and assertive licensing related to SUNY patent properties.
  • Review patent and patent application file histories; analyze various issues that arise during patent prosecution that could potentially impact downstream patent litigation; provide opinions on issues that arise during patent litigation.
  • Assist in development, communication, and implementation of best practices for patent prosecutions, licensing and litigation.
  • Collaborate with colleagues across the SUNY enterprise to build patent estates around specific industry sectors and areas of interest, develop enterprise-wide licensing strategies including pooling or bundling to maximize the licensing opportunities for SUNY-developed IP.
  • Assist in drafting and negotiating IP-related sections of licensing and other contracts and documents, as needed.
  • Monitor and analyze competitive intellectual property.
  • Manage external counsel on outsourced patent preparation and prosecution matters.
  • Mentor fellow employees about IP matters, conduct patent and trademark training sessions periodically, and collaborate across the enterprise, exercising judgment in resolving IP-related issues and helping to guide business and technology decisions, and helping to instill a pro-active approach through experience and foresight.
  • Consult with the SUNY Innovation Policy Board, periodically, as needed.

The ideal candidate will:

  • have a passion for science and technology and knowledge of the regulated process of transitioning technology from the academic bench to qualified industry partners for the development of products and services that impact human health and welfare;
  • have excellent verbal and written communication skills and be comfortable communicating with anyone who interacts with SUNY research, innovation, and commercialization; this includes researchers, inventors, teaching faculty, entrepreneurs, business leaders at all levels, administrators, students, and representatives of all levels of local, state and federal government;
  • have an agile mindset, can-do attitude, a desire to “get to yes,” and willingness to tackle any task needed to get the job done with the unwavering support of teammates and leadership;
  • have strong project management skills or capacity to learn them quickly (we will train on our specific methodology) to be effective in taking both lead and supporting roles in RF projects.

Requirements:

EDUCATION & EXPERIENCE:

Requirements:

  • Registered US patent attorney or patent agent in good standing before the USPTO having at least seven years of experience in drafting, filing, and prosecuting patent applications.
  • Experience with foreign patent prosecution, particularly in jurisdictions such as Europe and Asia.
  • A Bachelor’s degree or higher in biochemistry, immunology, biology, chemistry or similar field of endeavor.
  • Experience or education in high-tech and startups.
  • Experience performing patent prosecution and opinion work. The ideal candidate would have experience working both at a law firm and for a technology company.
  • Self-driven with the ability to independently handle workload and prioritize tasks.

Additional Information:

As an Equal Opportunity / Affirmative Action Employer, The Research Foundation for SUNY  will not discriminate in its employment practices due to an applicant’s race, color, creed, religion, sex (including pregnancy, childbirth or related medical conditions), sexual orientation, gender identity or expression, transgender status, age, national origin, marital status, citizenship, physical and mental disability, criminal record, genetic information, predisposition or carrier status, status with respect to receiving public assistance, domestic violence victim status, a disabled, special, recently separated, active duty wartime, campaign badge, Armed Forces service medal veteran, or any other characteristics protected under applicable law. 

The Company will not discharge or in any other manner discriminate against employees or applicants because they have inquired about, discussed, or disclosed their own pay or the pay of another employee or applicant.

Review of applications will begin immediately and continue until the position is filled.

The Research Foundation for the State University of New York is not an agency or instrumentality of the State of New York. Employees of the Research Foundation for the State University of New York are not state employees, do not participate in any state retirement system, and do not receive state fringe benefits. The Research Foundation for the State University of New York operates under a contract with The State University of New York and receives no directly appropriated state funding.

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