Patent Agent
Koch Industries
- Rochester, IL Lisle, IL
- Permanent
- Full-time
- Proactively engage business and technical stakeholders to gain a deep understanding of key technology, product offerings, and business objectives
- Strategically develop and shape a global patent portfolio in conjunction with in-house counsel consistent with shifting business priorities
- Actively manage preparation and prosecution of patent applications by outside counsel, both domestic and international
- Efficiently manage a global patent docket by timely obtaining/providing instructions while avoiding unnecessary delays, extension fees, and/or reminders
- Conduct patent training
- Assist in IP due diligence for M&A transactions
- Assist on freedom-to-operate, landscape, inventorship, ownership and/or post-issuance projects
- Provide litigation support
- Work on team projects and initiatives in general support of the IP Legal Capability
- Registration to practice before the USPTO
- Undergraduate degree in electrical engineering, mechanical engineering, physics, computer science, or an equivalent degree with heavy coursework focusing on electrical or mechanical course subject matter
- Experience in a law firm or corporate environment working independently (with minimal supervision) on drafting original patent applications and/or formulating strategies for, and drafting responses to, Office Actions?
- Patent portfolio management experience
- Strategic counseling experience related to patent portfolio management
- 5+ years in a law firm or corporate environment working independently (with minimal supervision) on drafting original patent applications and formulating strategies for, and drafting responses to, Office Action with an electro-mechanical focus
- Previous in-house patent experience
- International patent prosecution experience
- Primary responsibility for patent portfolio management
- Industrial electro-mechanical research and development experience
- Familiarity with IP software systems