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Patent and Trademark Attorney

2 months ago

San Jose, California, United States Power Integrations, Inc. Full time
Job Summary

The Patent and Trademark Attorney contributes to the creation and management of the company's patent and trademark portfolio.

This role unites a command of electrical engineering fundamentals with an understanding of the patent and trademark process to produce high-quality patent applications, trademarks, and to make recommendations for strategic business decisions.

Key Responsibilities
  1. Patent Prosecution: Draft and prosecute domestic patent applications either directly with the USPTO or with outside counsel.
  2. Foreign Patent Applications: Draft and prosecute foreign patent applications with outside counsel.
  3. Patent Strategy: Draft claims for offensive or defensive patent strategy.
  4. Technology Identification: Identify technologies which are candidates for patent protection through interaction with integrated circuit designers, applications engineers, and semiconductor device designers.
  5. Patent and Trademark Filing: Work with paralegals and administrative staff to file patent and trademark applications and any necessary paperwork directly with the USPTO.
  6. Portfolio Analysis: Analyze the patent and trademark portfolio to assess cost and benefits and present these recommendations to executive management.
  7. Trademark Clearance: Perform trademark clearance searches and analysis in domestic and foreign databases.
  8. Trademark Prosecution: Prepare, file, and prosecute U.S. trademark applications and manage renewals directly with the USPTO.
  9. Foreign Trademark Applications: Organize, file, and prosecute foreign trademark applications, and maintain registrations with counsel.
  10. Brand Protection: Oversee brand protection efforts and collaborate with internal departments for adherence to brand guidelines and trademark placement.
  11. Intellectual Property Disputes: Prepare and review of Demand letters, Cease and Desist letters, and Amicable agreements.
Requirements and Experience
  1. Education: J.D. from an accredited law school and admitted to the California state bar.
  2. Registration: Registered with the United States Patent and Trademark Office.
  3. Technical Background: B.S., M.S., or Ph.D. in electrical engineering or related technical field, with demonstrated competence in the theory and application of analog electronic circuits.
  4. Experience: A minimum of 5 years of experience with patent and trademark prosecution.
  5. Writing and Editing Skills: Highly developed technical writing and editing skills that include a superior command of the English language.
  6. Software Proficiency: Proficient in use of software tools such as Visio, Word, Excel, and PowerPoint to prepare documents with drawings, images, and text.
  7. Patent Center and Docketing Systems: Experience with Patent Center and electronic docketing systems, such as Foundation IP, is a valuable asset.
  8. Circuit Design and Evaluation: Experience in the construction and evaluation of circuits in the laboratory is desirable.
  9. Switched Mode Power Supplies: Experience in the design of off-line switched mode power supplies or familiarity with the design and fabrication of high voltage semiconductor devices would be a bonus.