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Duke University Job Description: |
Job Title: ENGINEERING PATENT AGENT |
Job Code: 2198 |
FLSA: E |
Job Level: 14 |
Revised Date: 04/01/2019 |
Job Family: JF 28 |
Work directly with the Office of Licensing and Ventures (OLVs) in house patent counsel, licensing directors, outside counsel and inventors on engineering related inventions in the technical areas of mechanical, electrical, software, and materials.
Specifically, the candidate will develop patent filing strategies that maximize commercial potential of engineering related inventions, prepare/file provisional patent applications and assist outside counsel in the preparation of office action responses.
OLV is responsible for patents, technology licenses and new venture development for engineering, life sciences and other inventions at Duke University.
Through direct, daily interaction with 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 the quality of life.
Work closely with a diverse and talented group of researchers, engineers, and inventors, as well as a dynamic legal group, both internal and external, to build and purposefully prosecute Duke University's engineering related patent portfolio and strategy.
This includes the following:
Identifying patentable engineering related inventions.
Designing and performing prior art searches for engineering-related inventions.
Developing patent filing strategies that maximize the commercial potential of those engineering related inventions.
Preparing and filing provisional patent applications for the engineering-related inventions.
Working with the in-house patent counsel and general counsel in protecting the engineering-related inventions.
Working with University inventors from the engineering school and Licensing Directors to review USPTO Office Actions, prepare/review responses.
Working with outside counsel on conversion and/or ongoing prosecution of pending patent applications for the engineering-related inventions.
Assisting the Associate Director-Legal with the development and implementation of patent database/docketing systems, patent billing and patent budgeting processes.
Assisting the Associate Director-Legal with presenting intellectual property seminars to faculty, staff and students.
Performing other related duties incidental to the work described herein.
The above statements describe the general nature and level of work being performed by individuals assigned to this classification. This is not intended to be an exhaustive list of all responsibilities and duties required of personnel so classified.
| Education/Training: | A Bachelor's degree in an engineering field (electrical/computer science preferred). The Patent Agent must be registered with the USPTO. |
| Experience: | Four years patent law and/or procedure experience drafting patent applications and managing patent prosecution.in an academic, government, industrial and/or law firm environment for engineering technologies. Preferred candidates will have at least 1 year experience in an academic technology transfer office. Candidates who possess an advanced degree, which exceeds the degree minimum requirement, may count the additional education obtained from the degree completion towards the minimum work experience qualifications. |
| Skills: | Excellent writing skills Strong collegial interpersonal skills exercising diplomacy with an ability to communicate effectively in person and through other communication mediums. Ability to work independently and/or within various organizational teams. Must be able to prioritize and manage the assigned case loads. Highly organized with attention to detail and thoroughness in completing assigned duties. Collaborative problem solver who can take initiative and set priorities while being flexible. Understanding of the university technology transfer process. |
The intent of this job description is to provide a representative and level of the types of duties and responsibilities that will be required of positions given this title and shall not be construed as a declaration of the total of the specific duties and responsibilities of any particular position. Employees may be directed to perform job-related tasks other than those specifically presented in this description.
Duke University is an Affirmative Action/Equal Opportunity Employer committed to providing employment opportunity without regard to an individual's age, color, disability, gender, gender expression, gender identity, genetic information, national origin, race, religion, sex, sexual orientation, or veteran status.
Duke aspires to create a community built on collaboration, innovation, creativity, and belonging. Our collective success depends on the robust exchange of ideas-an exchange that is best when the rich diversity of our perspectives, backgrounds, and experiences flourishes. To achieve this exchange, it is essential that all members of the community feel secure and welcome, that the contributions of all individuals are respected, and that all voices are heard. All members of our community have a responsibility to uphold these values.
Certain jobs at Duke University and Duke University Health System may include essential job functions that require specific physical and/or mental abilities. Additional information and provision for requests for reasonable accommodation will be provided by each hiring department.