Patent Agent

1 month ago

Anoka, United States HOYA Vision Care Full time
Job Description

HOYA VISION CARE, North America

Job Title: Patent Agent, Hoya Vision Care, North America

Department: Legal, Intellectual Property

Location: Ramsey, MN; Hybrid

Reports To: Global Head- Intellectual Property

Summary:

Hoya Vision Care is seeking an experienced and dynamic Patent Agent to join our Intellectual Property Team. This opportunity is for Non-Law Degree Candidate. As our Patent Agent, you will be a key member of our team reporting to the Global Head of IP, and you will manage US patent matters at our North America R&D site in Ramsey, Minnesota. Working collaboratively with the R&D and IP teams in the US and Japan, you will build and manage a global patent portfolio, provide IP support to R&D, and contribute your US patent expertise to the Tokyo-based patent team. For the right candidate, we will consider a hybrid arrangement with the expectation of being on-site one week a month.

Primary Responsibilities
  • Drafting and Responding: Prepare and draft US patent applications, respond to office actions from the United States Patent and Trademark Office (USPTO), and manage the prosecution of patents in collaboration with foreign counsel, primarily in Asia and Europe.
  • Patent Analyses: Conduct and contribute to various patent analyses, including patentability assessments, freedom-to-operate (FTO) analyses, and patent landscape evaluations to support strategic decision-making.
  • IP Strategy and Management: Participate in and provide guidance on other aspects of intellectual property strategy and management, contributing to the development of a robust IP strategy that supports the company's innovation and business objectives. You will be working with R&D management and inventors to build and manage a global patent portfolio.
Required Qualifications
  • Bachelor of Science degree in materials science or related discipline. Advanced degree is preferred.
  • Registration to practice before the U.S. Patent & Trademark Office.
  • 5 - 10+ years' experience drafting, prosecuting, and managing patent applications.
  • 5 - 10+ years' experience with patentability, FTO, patent landscape, and other patent analyses.
Skills Associated with the Patent Agent Role at Hoya Vision Care

1. Technical Proficiency:
  • Scientific Knowledge: A Bachelor of Science degree in materials science or a related discipline is required. An advanced degree is preferred, demonstrating a deep understanding of technical concepts and innovations relevant to the company's focus areas.
  • Patent Drafting: Expertise in preparing and drafting US patent applications, showcasing the ability to translate complex technical information into clear and precise patent claims and descriptions.
2. Legal Expertise:
  • USPTO Procedures: Proficiency in responding to office actions from the United States Patent and Trademark Office (USPTO), including the ability to address examiner rejections and objections effectively.
  • Patent Prosecution: Experience in managing the prosecution of patents, including working with foreign counsel in Asia and Europe to navigate international patent laws and regulations.
3. Analytical Skills:
  • Patentability Assessments: Ability to conduct thorough patentability analyses to determine the likelihood of obtaining a patent based on novelty and non-obviousness criteria.
  • Freedom-to-Operate (FTO) Analyses: Expertise in performing FTO analyses to identify potential infringement risks and ensure that the company's activities do not violate existing patents.
  • Patent Landscape Evaluations: Skill in evaluating patent landscapes to understand the competitive environment and identify opportunities and threats within the technology field.
4. Strategic Thinking:
  • IP Strategy Development: Experience in contributing to and shaping intellectual property strategies that align with the company's innovation goals and business objectives.
  • Global Patent Portfolio Management: Ability to work with R&D management and inventors to build and manage a global patent portfolio, ensuring coherence and strategic alignment across different regions.
5. Communication and Collaboration:
  • Cross-Functional Teamwork: Proven ability to collaborate effectively with R&D and IP teams in the US and Japan, demonstrating strong interpersonal and communication skills.
  • International Coordination: Experience in managing international patent matters, working with foreign counsel, and contributing to a Tokyo-based patent team, highlighting the capacity to navigate cross-cultural and international IP environments.
6. Adaptability and Organization:
  • Project Management: Capability to manage multiple patent-related projects simultaneously, demonstrating strong organizational skills and attention to detail.
  • Hybrid Work Arrangement: Ability to adapt to a hybrid work model, including being on-site at the North America R&D site one week a month, while effectively managing responsibilities remotely.
7. Problem-Solving:
  • Innovative Solutions: Skill in identifying and resolving complex patent issues, crafting strategic responses to office actions, and providing practical solutions to support ongoing R&D efforts.