Job Description

Responsible for all aspects of U.S. and foreign patent prosecution for U.S. based Olympus entities in the medical field, including drafting applications and responding to Office Actions from the United States Patent and Trademark Office in coordination with outside patent counsel. Will be the primary interface with engineers and technical staff regarding new patent filings. Will conduct competitive landscape searches and review prior art with R&D staff at regular meetings. Will be responsible for the prosecution process from invention disclosure to the issued patent. Manage IP docketing and database in coordination with support staff. Conduct patent clearance studies and patentability searches. Will assist with training programs for engineers on topics such as patent searching. Will coordinate with Global IP team members on prosecution issues that impact global business objectives. Will assist n developing and executing portfolio management strategy. Responsible for other litigation, licensing, acquisition or partnership due diligence as necessary. Handle intellectual property matters arising from the daily business operation of Olympus Corporation of the Americas, including Olympus Surgical Technologies Americas (the Corporation) , including negotiating and drafting contracts on behalf of the Corporation on a variety of intellectual property matters. Provide professional counsel and service to the medical and surgical product groups of other companies of the Olympus Group in intellectual property matters.

Job Duties

• Manage all aspects of US prosecution including drafting applications and responses to Office Actions.
• Manage intake of patent clearance study requests and conduct search for freedom to operate. Manage intake of invention disclosures and review disclosures for patentability.
• Coordinate prosecution matters with outside counsel.
• Instruct foreign patent associates on foreign filings and office actions.
• Conduct infringement and invalidity studies in support of litigation.
• Manage docket and database management. Train engineers on patent issues.
• Participate in M&A team for due diligence and freedom to operate for acquisitions or licenses.
• Create patent landscapes and design guidance documents.
• Drafting and negotiating various intellectual property related agreements, including licenses and transactional documents.
• Preparing and revising patent clearance studies. Providing counsel on patent infringement and patent clearance opinions.
• Assisting in the management of the Corporation’s worldwide intellectual property portfolio.
• Works with research and development and marketing personnel, as well as patent agents and senior management, to define and implement intellectual property strategy for the Corporation.
• Performs other related duties as directed.

Job Qualifications

Required:

• Juris doctor degree from an accredited law school. Member of at least one State bar.
• Bachelors of Science required and preferably Master’s of Science degree in an Electrical Engineering, Mechanical Engineering or medical device design field. Registered to practice before the U.S. Patent and Trademark Office.
• Minimum 3 years of experience in patent prosecution or 5 years combined engineering and patent experience.
• Other considerations: Candidate would need to be willing to travel up to 20% of their time to support other locations.

Preferred:

• Law firm experience preferred.
• Experience in patent prosecution for mechanical and electrical devices preferred.
• Knowledge of energy devices, surgical devices, software or optical technology a plus.
• Engineering industry experience preferred.
• Must be able to communicate effectively (verbal and written) and be proficient in Microsoft Office (Word, Excel or Access, PowerPoint).
• Ability to work in small team environment, but also self starter with ability to work independently.
• Must be able to meet deadlines and be detailed orientated.
• Good planning and organization skills a must.
• Strong critical thinking and problem solving skills.
• High energy, self motivated, hands on and participatory with strong results orientation and ability to quickly establish priorities.
• Must have a sense of ownership and a desire to support the organization to achieve high level corporate goals.
• Strong relationship skills.
• High level of motivation, commitment and dedication combined with a proactive mindset.