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Patent Counsel or Patent Agent, Life Sciences, at Purdue Research Foundation

 

BUSINESS: Purdue Research Foundation
POSITION TYPE: Full-time
START DATE: Immediate Availability

Essential Functions

  • Perform prompt and competent completion of analyses of intellectual property protection and strategies to enable timely technology transfer of Purdue intellectual property in the biomedical and life science arts.
  • Evaluate and implement strategies for the protection of IP in a manner that maximizes commercial and licensing potential.
  • Work cooperatively with Purdue inventors and Office of Technology Commercialization (OTC) licensing staff to evaluate technology-based innovations for appropriate intellectual property protection.
  • Draft patent applications and present applications to US Patent and Trademark Office and copyright registrations to US Copyright Office for the benefit of Purdue.
  • Prosecute patent applications with respect to all aspects of patent law, including preparing formal communications and responses to national patent offices, conducting examiner interviews and related prosecution activities for the benefit of Purdue.
  • Engage and manage outside counsel on patent prosecution matters including coordinating, managing and accounting for budget expenditures associated with all assigned project-related activities. 

Additional Responsibilities

  • Work cooperatively with OTC business development managers in the evaluation of intellectual property landscapes.
  • Assist in due diligence of legal matters relating to any OTC matter.
  • Provide the OTC business development team with expertise and advice of IP licensing. 
  • Manage outside counsel of litigation matters.
  • Represent Purdue and OTC with national organizations, associations and groups related to university commercialization. 

Knowledge/Skills/Abilities

  • Registered with US Patent and Trademark Office.
  • Member of Indiana or a reciprocating state Bar in good standing (not applicable for Patent Agent).
  • Strong working knowledge of intellectual property transactions including licensing required.
  • Knowledge of technology transfer within industry and/or academia required.
  • Strong diplomatic skills required.
  • Legal contract comprehension and hands-on patent prosecution experience preferred.
  • Commitment to higher education and the values of scientific research and discovery for societal benefit.
  • Excellent organizational, problem-solving, computer, written/verbal communication skills required.
  • Ability to work independently as well as in a team environment.
  • Candidate must be comfortable interacting with people from varied disciplines and with managing multiple complex projects.
  • Occasional travel required.
  • Must be self-motivated, enthusiastic, detail-oriented, able to manage/coordinate multiple tasks, and able to work collaboratively and successfully with different sectors, including co-workers, academic scholars, entrepreneurs and industry executives. 

Education/Experience

  • Bachelor’s degree in chemistry, biology, or other life science related fields; MS or PhD preferred
  • JD preferred
  • 3-5 years of direct patent drafting and prosecution before the US Patent and Trademark Office in the Life Sciences. 

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