Legal Career Center

The Research Foundation for the State University of New York (RFSUNY) seeks a licensed United States Patent Attorney or Patent Agent with a technical background in chemistry, biochemistry, biology, genetics, or any other discipline in the life sciences to join its Office of Industry and External Affairs (I&EA) team based in Albany, New York. The successful candidate should have meaningful patent drafting and prosecution experience in various areas including small molecules, medical devices, therapeutics, RNA, genetics, and significant research or technical experience in one or more of these fields.

This position will work directly with technology commercialization, business development professionals, and inventors across the SUNY enterprise to identify protectable aspects of new inventions, develop and implement patent prosecution strategies, build patent estates, draft and file patent applications, conduct examiner interviews, draft PTAB appeal briefs, respond to office actions, and other communications from the USPTO to ensure the successful issuance and maintenance of patents. You will proactively partner with professionals and inventors from across SUNY to determine current and future patent needs and maintain a very close relationship with stakeholders across the enterprise to deliver highly valued services.

A focus of the I&EA team is moving SUNY technology to market. Through direct, daily interaction with technology commercialization professionals across the enterprise, faculty, small and large businesses, and venture investors, we build strong relationships and enter into agreements to translate academic discoveries into commercial products that benefit society, impact public health, and improve quality of life. If you are a business-minded individual who is self-motivated, curious, enthusiastic about technology, outgoing, enjoys work, continually being challenged, and engaging deeply with inventors, then this is a great opportunity for you.

DUTIES:

• Assist SUNY inventors in drafting and submitting New Technology Disclosures (NTDs) using our online Inventor Portal.
• Evaluate and communicate patentability of inventions submitted as NTDs; conduct searches of scientific journals and patent databases.
• Identify patentable inventions through regular interactions with research teams and collaborators, including evaluating inventions, conducting prior art searches, and generating and executing on corresponding patent protection strategies.
• Prepare and file patent applications and reply to communications from the USPTO during the patent application process.
• Represent The Research Foundation for SUNY in court or before the USPTO Patent Trial and Appeal Board, as may be required from time to time.
• Work with foreign patent counsel and prepare letters of instruction to foreign counsel for filing and prosecution of foreign counterparts to US patent applications.
•  Prepare and communicate legal opinions on patentability, validity, freedom to operate and infringement.
• Support dispute resolution, litigation and assertive licensing related to SUNY intellectual property.
• Review patent and patent application file histories and analyze various issues that arise during patent prosecution that could potentially impact downstream patent litigation; Analyze and provide legal opinions on issues that arise during patent litigation.
• Assist in development, communication and implementation of best practices for patent prosecutions, licensing and litigation.
• Collaborate with colleagues across the SUNY enterprise to build patent estates around specific industry sectors and areas of interest, develop enterprise-wide licensing strategies including pooling or bundling to maximize the licensing opportunities for SUNY-developed IP.
• Assist in drafting and negotiating IP-related sections of licensing and other contracts and documents, as needed.
• Monitor and analyze competitive intellectual property.
• Manage external counsel on outsourced patent preparation and prosecution matters.
• Mentor fellow employees about IP matters, conduct patent and trademark training sessions on a periodic basis, and collaborate across the enterprise, exercising judgment in resolving IP-related issues and helping to guide business and technology decisions, and helping to instill a pro-active approach through experience and foresight.
• Consult with the SUNY Innovation Policy Board, periodically, as needed.

You are the best candidate for this role because you are:

Passionate - For you, this is not just another job. Our mission resonates with you, you truly believe in what we do and get energy from our collective wins. Like us, you want to make a difference. Here, you can.
Tireless - You seek to learn from others constantly, while also helping to support those who are not as well versed as you are in your technical area. As a result, you are determined to achieve your goals and relentlessly support your team while always keeping in mind this is not your typical 9-5 job.
Gritty - You have an agile mindset, can-do attitude, a desire to "get to yes", and a willingness to tackle any task needed to get the job done. You thrive in a fast-paced and changing environments that let you flex your creative muscle and you value being a key member of a close-knit team that works hard and always has each other's backs.
Entrepreneurial - You are undeterred no matter the situation and pivot when you need to. You enjoy building things and serving others in working toward and achieving common objectives and goals. You are obsessed with delivering a high-quality product no matter how small the task and take real pride in your work.

EDUCATION & EXPERIENCE:

• Registered US patent attorney in good standing before the USPTO having at least six years of experience in drafting, filing, and prosecuting patent applications.
• Experience with foreign patent prosecution, particularly in jurisdictions such as Europe and Asia.
• A Bachelor’s degree or higher in a life sciences discipline.
• Experience or education in high-tech and startups.
• Experience performing patent prosecution and opinion work. The ideal candidate would have experience working both at a law firm and for a technology company.
• Self-driven with the ability to independently handle workload and prioritize tasks.