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Patent Agent

Job Type: Full time
Company/Firm: Smiths Medical
Location: Saint Paul, Minnesota
Date posted: 03/07/10
Salary: Salary dependent on experience
Job Description:

 Position Description
• Provides advice and service on patent/intellectual property matters including patentability of inventions. Works with patent law firms to obtain patent protection for the products that will be Smiths Medical’s high margin products of the future. Represents the organization in providing solutions to difficult technical issues associated with specific projects.



• Provides strategic input into patent prosecution decisions to help ensure the patents obtained provide maximum value to the company.
• Prepares, files and processes patent applications, in partnership with law firms, to obtain broadest possible protection for the company’s inventions.
• Ensures all commercially important inventions are protected by valid patents and do not infringe on valid third party patents.
• Conducts and evaluates patent searches, and maintains the company’s database of patents, applications and markings.

• Conducts patent searches for clearance, invalidity, patentability, and state-of-the-art assessments internally.
• Coordinates patent prosecution activities of outside counsel.
• Ensures patent markings stay current.
• Reviews clearance opinions and helps guide design-around options.
• Budgets, tracks and reports patent-related expenses.
• Provides imaginative, thorough, practicable technical solutions to a wide range of difficult problems.
• Contributes to the completion of specific programs and projects.
• Assists as needed with other Legal Department initiatives including patent enforcement and defense to allegations of infringement.
• This position is required to assure compliance of Company operations to all applicable laws, regulations and standards, good business practices and company documented procedures (including but not limited to FDA, Quality Systems Regulations, ISO 13485, ISO 14001, government occupational health and environmental regulations and statutes).


Minimum Education and Experience
• Bachelor’s Degree or equivalent work experience, preferably in the field of engineering, plus 7 or more years experience as either a patent agent or patent examiner.
• Admitted to practice before the USPTO.
• Solid understanding of Smiths Medical Legal Department procedures, United States Patent and Trademark Office rules, and U.S. case law.
• Strong expertise in patent prosecution, U.S. patent law, and capability to develop extensive proficiency in all of Smiths Medical’s technologies.
• Knowledge in software technology.
• Experience budgeting, tracking and forecasting expenses.
• Experience preferred in engineering and project management.
• Software knowledge: MS Word, Excel, patent searching software, patent database software.


Minimum Knowledge Abilities and Skills
• Strong project management skills.
• Strong influencing skills.
• Competency in the electrical and mechanical arts.
• Able to travel to R&D locations and law firm locations.
• Must be able to prioritize multiple projects in the face of absolute deadlines.

Necessary Experience:


Contact: Apply Online

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