Patent Agent | Medical Device / Diagnostics IP | Bedford, MA (Onsite)

Job Summary

The Patent Agent is responsible for providing high quality intellectual property (IP) service to the Werfen organization. The Patent Agent is responsible for strategically establishing patent portfolios in different business areas, performing freedom-to-operate, assisting with IP due diligence, supporting internal clients, managing correspondence outside counsel, and working closely with both the business and the Chief IP Counsel on a daily basis.

Key Accountabilities

• Manage patent portfolios and internal databases, including drafting and prosecuting patents
• Initiate, improve, and implement IP strategies and processes across Werfen technology centers to optimize IP asset procurement
• Identify strengths and weaknesses and set priority to selected technical areas for IP procurement
• Update databases and provide IP statistics information to business
• Perform freedom-to-operate studies and provide high quality work products to business
• Effectively, efficiently, and independently manage outside counsel to ensure high quality prosecution work product within a reasonable budget
• Perform trade secret survey and strategize and implement trade secret policies adapted to local laws within Werfen entities
• Maintain knowledge of current IP practices in major jurisdictions and apply such knowledge effectively in daily work
• Support IP due diligence as needed
• Performs other duties and responsibilities as assigned

Networking/Key Relationships

Establish and maintain good working relationships with Marketing, R&D, and other stakeholders within the business.

Minimum Knowledge & Experience

• Bachelors degree in science or engineering, preferably in biological sciences, required
• Admission to practice before the U.S. Patent & Trademark Office required
• Minimum of 5 years of relevant experience gained in a law firm required. In-house experience is a plus but is not required
• Solidly trained in patent drafting and prosecution, and currently able to independently draft and prosecute without attorney supervision
• Well-versed in patent prosecution rules in major jurisdictions in software, hardware, and diagnostic assays
• Preferred training or experience relevant to life sciences, chemical analysis, or materials characterization and strong technological aptitude and inclination to learn and work with a range of technologies
• Combination of in-depth IP knowledge and commercial awareness of the business issues facing the organization and the ability to deal with problems in a practical manner

Skills & Capabilities

• Proven ability to establish a high degree of credibility, respect and trust at all levels including with technologists, scientists, managers and executives
• Strong professional and personal communication skills, capable of dealing with a wide range of people
• High level of accountability for responsibilities taken or work assigned
• Effective planning and organizational skills to prioritize key areas of responsibility, tasks and projects. Ability to prioritize and manage multiple projects
• Strong team player who is both committed and flexible
• The successful candidate must also exhibit the highest integrity, excellent judgment, and the ability to proactively recognize and effectively communicate legal issues to patent, legal, and senior management
• Be energized by challenging and interesting legal work, technical and scientific matters, and novel business problems
• Be keenly interested in and curious about technology and eager to work closely with technology development professionals
• Be able to work cross-functionally to develop knowledge to enhance support of business needs
• Have excellent drafting and very clear communication skills
• Must be able to think strategically but also work on details meticulously
• Must be able to initiate projects as needed and follow through implementation
• Must be able to handle matters in a wide range of technology fields, curious, and willing to take on new tasks and continuously learn

Travel Requirements

Up to 5% travel required, mainly in the US to other technology centers.