Patent Agent/Counsel

Patent Agent/Counsel

Requirements

• At least an undergraduate degree in Chemical Engineering, preferably, or Process Engineering, with a focus on inorganic chemistry. Consideration will be given to candidates with an undergraduate degree or higher in Chemistry (inorganic) or the Applied Sciences
• Registered as a Patent Agent with the United States Patent and Trademark Office (USPTO). Attorneys registered with the USPTO will also be considered, if they have the requisite experience in directly drafting and prosecuting patent applications
• At least four (4) years’ experience in drafting and prosecuting patent applications in the field of chemical processes and systems, or a related field, with corporate in-house experience preferred
• Demonstrated experience conducting inventor interviews, including fleshing out an invention disclosure, identifying the essential elements and alternate embodiments of an invention, and helping inventors identify patentable vs. non-patentable features.
• Ability to distinguish a party’s background IP from a new invention, and to claim an invention accordingly
• Ability to distill complex problems into simple solutions
• Ability to quickly understand a patent portfolio, including issues with specific families and key filings, in view of business priorities
• Ability to collaborate in a fast-paced multi-disciplinary team environment; including the ability to effectively communicate and navigate through the interfaces between technical, business, legal and administrative teams
• Ability to present on a variety of IP topics to the business unit and management
• Experience preparing patent applications, determining correct inventorship, and managing inventor-derived disclosures from inventors across different corporate entities
• Experience managing invention disclosures and records from inventors across different corporate entities

Responsibilities

• Patent portfolio management: prosecute existing patent applications to issuance, and grow the portfolio by filing new applications
• Interfacing with inventors for invention disclosure activities
• Drafting patent applications
• Reviewing and preparing office action responses
• Managing the invention disclosure process, including generating and reviewing IDFs for patentability or other protection
• Managing intellectual property assets, including docketing deadlines and maintaining patent filing lists
• Managing external IP counsel on patent & trademark matters
• Supporting Legal and Technical teams with IP and Confidentiality provisions associated with NDAs, contracts, licensing and government funding activities
• Critically review the existing patent portfolio and identifying gaps to guide R&D activities to close gaps
• Supporting patent legal activities (litigation, as well as validity, FTO, and infringement opinions), both at the PTO and before District Courts
• Patent landscaping of other entities in the technical space, including their patent filings, to identify gaps in the patent portfolio worldwide and opportunities to leverage it
• Managing the sharing of trade secrets and sensitive technical information with internal or external parties
• Providing IP training to employees, new hires and other stakeholders
• Technology and IP document control
• Updating and executing IP Protocols
• Project Management of internal and external projects relating to the above technical fields
• Occasional travel to other locations in Southern California and Houston

Preferred Qualifications

• Claim drafting experience preferred in mineral or brine (e.g. lithium) extraction and refinement, or a related field
• Experience and comfort working in a fast-paced commercial and/or R&D environment
• Insatiable curiosity – you bring a desire to learn about a company’s key technologies and how best to protect them
• Be the IP ambassador and promoter in TerraLithium
• High level of independence and self-motivation – ability to come to the table ready with solutions
• Comfort being supervised and working remotely, and willingness to exchange in collaborative feedback virtually to establish best practices, including taking direction on patent drafts and Office Action responses
• Passionate about innovation and its application to addressing climate change
• Thrive on doing things that have not been done before (explorer mindset) and tackling challenging problems