Patent Agent/Attorney at Iron Mountains LLC

Iron Mountains LLC

Full-Time

Morgantown, PA 19543, USA

Not defined

23 Nov → 23 Dec

Job Description

Iron Mountains, LLC's beautiful facility is located in scenic Berks County, PA, within a mile of PA turnpike exit 298, and within easy access of Philadelphia. Our quiet location promises the luxuries of a low-stress commute, a 360 view of nature and a sweet summer lunch barbecue spot.

Our health and welfare benefits are superior, boasting an onsite state-of-the-art gym facility coupled with a $0 Copay / $0 Deductible Medical & Prescription Plan Design and a 401(k) with 6% Employer Match.

We are in search of an experienced Patent Agent/ Patent Attorney to join our successful product research and design organization with 20 years of developing a broad range of baby gear products from child safety seats to multi-mode strollers, from travels beds to feeding solutions and beyond. The scope of responsibilities of the role will be dependent upon Attorney vs. Agent status, IP experience and technical expertise.

The principal objective of the Patent Agent / Patent Attorney is to assist with ensuring the protection of both the company's existing IP portfolio as well new IP innovation.

You will work onsite and closely with the Company, it's US affiliates' and cross-functional teams, collaborating with colleagues and inventors, executive team members and foreign legal counterparts.

Essential Duties and Responsibilities
• Work with IP team to develop and implement IP strategy, as well as policies and procedures to ensure the protection of the company's intellectual property.
• Work closely with research and development personnel to identify patentable inventions, participate in invention disclosure assessments and provide guidance regarding the patentability of inventions under review.
• Develop and manage strategic patent portfolios, including drafting and prosecuting mechanical patent applications worldwide in a diverse and growing infant and child product field to create an intellectual property portfolio aligned with the strategy of the company.
• Educate internal personnel on relevant IP laws and related business issues.
• Draft and review contracts and advise on various transactional matters (e.g. non-disclosure agreements, materials transfer agreements, licensing agreements, and collaborations).
• Effectively manage and supervise external relationships with outside counsel and collaborators; review strategies prepared by outside counsel, communicate strategies to leadership team, and provide guidance to outside counsel consistent with our IP strategy.
• Perform prior art searches in support of landscape and freedom-to-operate assessments.
• Develop a thorough understanding of the company's current and planned products, competitors, and markets and keep abreast of developing legal trends, laws, and regulations.

This position description is intended to provide a summary of the major duties, tasks, and responsibilities of this position and shall not be considered an exhaustive listing of all work requirements.

Requirements and Qualifications

Attorney Requirements
• Minimum BS in Engineering (e.g., mechanical engineering, industrial design or related field).
• JD, State Bar, and USPTO Bar.
• One (1) to three (3) years of experience preparing and prosecuting patent applications in the mechanical space in-house and/or in a nationally recognized law firm

Agent Requirements
• Minimum BS in Engineering (e.g., mechanical engineering, industrial design or related field), MS preferred.
• Registered to practice before the United States Patent and Trademark Office.
• Three (3) to five (5) years of experience preparing and prosecuting patent applications in the mechanical space in-house and/or in a nationally recognized law firm.

General Experience, Skills & Competencies
• Experience in mechanical or design engineering prior to being a registered patent agent is desirable.
• Knowledge of U.S. patent and trademark laws, rules, and procedures related to filing and prosecution.
• Understanding of global IP norms and procedures.
• Exceptional drafting and research skills with strong academic credentials.
• Demonstrated ability to deal with a variety of technologies with a particular interest and aptitude for mechanical and industrial design patents
• Impeccable attention to detail, with outstanding writing and analytical skills.
• Strong patent database searching skills.
• Ability to remain poised under pressure or opposition; demonstrates flexibility/adaptability in changing and challenging situations.
• Team orientation with strong integrity and professionalism.
• Possess superior interpersonal skills and the ability to work effectively with all levels of management and staff; leads by example.
• Outstanding listening and communication skills; adept at communicating concepts and IP terminology and information both verbal and written to a non-legal audience.
• Excellent project management and organizational skills to effectively prioritize, manage numerous competing priorities & resources simultaneously, while ensuring deadlines are met.
• Possess positive and approachable demeanor with strong interpersonal skills and the ability to work effectively with all levels of management and staff; leads by example.
• Excellent organizational skills and an ability to prioritize effectively to deliver results within reasonably established timelines.
• Ability to work independently and as part of a team.
• Strong interpersonal skills, including verbal and written communication, are essential in this collaborative work environment.
• Industry experience highly desirable.

Technology
• Familiarity with docketing systems and patent file management systems.
• Proficiency with Microsoft Office applications such as Word, Excel, PowerPoint, and Outlook.
• Familiarity with:
• Asset Management Software | IPfolio preferred
• Electronic signature technology
• Expense reporting software | Concur a plus
• Able to quickly acquire proficiency with new skills and technologies.

Other
• Travel: Open to international business travel, at least once a year.
• Ability to work extended hours as business needs warrant, may include nights and weekends

Applicants must be currently authorized to work in the United States on a full-time basis.

Job Responsibilities

  • You will work onsite and closely with the Company, it's US affiliates' and cross-functional teams, collaborating with colleagues and inventors, executive team members and foreign legal counterparts
  • Work with IP team to develop and implement IP strategy, as well as policies and procedures to ensure the protection of the company's intellectual property
  • Work closely with research and development personnel to identify patentable inventions, participate in invention disclosure assessments and provide guidance regarding the patentability of inventions under review
  • Develop and manage strategic patent portfolios, including drafting and prosecuting mechanical patent applications worldwide in a diverse and growing infant and child product field to create an intellectual property portfolio aligned with the strategy of the company
  • Educate internal personnel on relevant IP laws and related business issues
  • Draft and review contracts and advise on various transactional matters (e.g. non-disclosure agreements, materials transfer agreements, licensing agreements, and collaborations)
  • Effectively manage and supervise external relationships with outside counsel and collaborators; review strategies prepared by outside counsel, communicate strategies to leadership team, and provide guidance to outside counsel consistent with our IP strategy
  • Perform prior art searches in support of landscape and freedom-to-operate assessments
  • Develop a thorough understanding of the company's current and planned products, competitors, and markets and keep abreast of developing legal trends, laws, and regulations
  • This position description is intended to provide a summary of the major duties, tasks, and responsibilities of this position and shall not be considered an exhaustive listing of all work requirements

Requirements / Qualifications

  • Minimum BS in Engineering (e.g., mechanical engineering, industrial design or related field)

  • JD, State Bar, and USPTO Bar

  • One (1) to three (3) years of experience preparing and prosecuting patent applications in the mechanical space in-house and/or in a nationally recognized law firm

  • Registered to practice before the United States Patent and Trademark Office

  • General Experience, Skills & Competencies

  • Knowledge of U.S

  • patent and trademark laws, rules, and procedures related to filing and prosecution

  • Understanding of global IP norms and procedures

  • Exceptional drafting and research skills with strong academic credentials

  • Demonstrated ability to deal with a variety of technologies with a particular interest and aptitude for mechanical and industrial design patents

  • Impeccable attention to detail, with outstanding writing and analytical skills

  • Strong patent database searching skills

  • Ability to remain poised under pressure or opposition; demonstrates flexibility/adaptability in changing and challenging situations

  • Team orientation with strong integrity and professionalism

  • Outstanding listening and communication skills; adept at communicating concepts and IP terminology and information both verbal and written to a non-legal audience

  • Excellent project management and organizational skills to effectively prioritize, manage numerous competing priorities & resources simultaneously, while ensuring deadlines are met

  • Possess positive and approachable demeanor with strong interpersonal skills and the ability to work effectively with all levels of management and staff; leads by example

  • Excellent organizational skills and an ability to prioritize effectively to deliver results within reasonably established timelines

  • Ability to work independently and as part of a team

  • Strong interpersonal skills, including verbal and written communication, are essential in this collaborative work environment

  • Familiarity with docketing systems and patent file management systems

  • Proficiency with Microsoft Office applications such as Word, Excel, PowerPoint, and Outlook

  • Travel: Open to international business travel, at least once a year

  • Ability to work extended hours as business needs warrant, may include nights and weekends

  • Applicants must be currently authorized to work in the United States on a full-time basis

Benefits/What We offer

  • Our health and welfare benefits are superior, boasting an onsite state-of-the-art gym facility coupled with a $0 Copay / $0 Deductible Medical & Prescription Plan Design and a 401(k) with 6% Employer Match

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