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Patent Attorney/Agent
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Position Number: 4210710
Location: Philadelphia, PA
Position Type: Health - Health Education & Promotion

Patent Attorney/Agent

University Overview

The University of Pennsylvania, the largest private employer in Philadelphia, is a world-renowned leader in education, research, and innovation. This historic, Ivy League school consistently ranks among the top 10 universities in the annual U.S. News & World Report survey. Penn has 12 highly-regarded schools that provide opportunities for undergraduate, graduate and continuing education, all influenced by Penn's distinctive interdisciplinary approach to scholarship and learning. As an employer Penn has been ranked nationally on many occasions with the most recent award from Forbes who named Penn one of America's Best Large Employers in 2023.

Penn offers a unique working environment within the city of Philadelphia. The University is situated on a beautiful urban campus, with easy access to a range of educational, cultural, and recreational activities. With its historical significance and landmarks, lively cultural offerings, and wide variety of atmospheres, Philadelphia is the perfect place to call home for work and play.

The University offers a competitive benefits package that includes excellent healthcare and tuition benefits for employees and their families, generous retirement benefits, a wide variety of professional development opportunities, supportive work and family benefits, a wealth of health and wellness programs and resources, and much more.

COVID-19 vaccination or a University authorized exemption is a requirement for all positions at the University of Pennsylvania. For more information about Penn's vaccine requirements, visit the Penn COVID-19 Response website for the latest information.

Posted Job Title
Patent Attorney/Agent

Job Profile Title

Job Description Summary
The Patent Attorney/Agent will assume a wide range of responsibilities that support the University of Pennsylvania's patent portfolio.

Job Description

Reporting to the COO/Executive Director of Intellectual Property, the Patent Attorney/Agent will assume a wide range of responsibilities that support the filing, prosecution, maintenance and defense of the University of Pennsylvania's patent portfolio. The Patent Attorney/Agent will also serve as a resource for Penn faculty and PCI staff on IP-related matters, including providing strategic guidance and advice on invention patentability, and the prosecution, maintenance, and defense of Penn's IP portfolio. The Patent Attorney/Agent will be responsible for maintaining and further developing the relationships with Penn's outside patent counsel, including overseeing workflow, patent quality, budgets, ensuring faculty satisfaction, implementing process improvements, and co-developing programs to support engagement with Penn's IP stakeholders. They will review and approve all legal bills and will assist with developing metrics and preparing reports to provide analytics to support the ongoing assessment of the Penn's patent investments. The Patent Attorney/Agent will also provide legal advice on patentability, white space analysis, and patent family mapping for complex and high-potential patent estates. They will draft and file provisional applications for select IP assets for which utilizing outside counsel is not indicated.

Job Responsibilities

Serve as a resource to PCI staff and Penn faculty by providing strategic IP advice relating to (a) patentability of Penn inventions, and (b) the drafting, filing, prosecution, maintenance, and defense of Penn's IP assets.
Participate in PCI's weekly Patent Investment Meeting (PIM).
Working in concert with the business development team, act as a faculty concierge on IP matters related to high potential portfolios, including developing and maintaining patent family maps, performing white space analysis, and providing strategic IP advice.
Serve as the primary day-to-day manager relationship of outside patent counsel, working to ensure that high quality patents and high faculty satisfaction are maintained throughout the process.
Ensure that the engagement with outside counsel is structured in a productive and efficient manner.
Investigate and resolve concerns and conflicts raised by faculty, licensees, the business development team, and other stakeholders.
Support the drafting, filing, and prosecution of patent applications by working with inventors, PCI staff and outside counsel to draft, review and file high quality patent applications and office action responses to robustly protect Penn's intellectual property assets.
On a limited basis, draft provisional applications when directed for select IP assets where utilizing outside counsel is not indicated.
Develop and implement metrics and analytics for measuring patent quality and customer service to ensure that PCI, Penn faculty, and third-party stakeholders (including licensees) are receiving world class IP service from outside vendors.
Review and approve all patent bills to ensure they are within established budgets.
Support development of analytics to evaluate Penn's historical and future investments in its IP portfolio.
Other Duties as assigned.

Qualifications

Education and Experience:

Patent Agent: USPTO registration, Bachelor's degree in a scientific discipline, and a minimum of 5-7 years of experience preparing, filing, and/or prosecuting patents.
Patent Attorney: USPTO Registration, J.D. from ABA accredited law school; admitted and in good standing in Pennsylvania or other state bar; Bachelor's degree in a scientific discipline, and a minimum of 5-7 years of experience managing patent preparation, filing, and/or prosecution as a JD, preferably at the Associate level.
Patent attorney strongly preferred. Degree in life sciences preferred; advanced degree preferred.
Fluency with complex scientific innovation and ability to identify and provide IP advice for inventions in diverse fields, including those outside of area of technical expertise.
Successful track record of working in academic and/or corporate environments. Excellent oral and written communications skills.
Proven customer service skills.
Excellent attention to detail and proven ability to follow-through on tasks and the ability to effectively work independently and in a team environment.
Proven ability to work under pressure with tight deadlines.
Commitment to values and strong business ethics.

Targeted Pay Range:

$145,000 - $200,000 - Salary offers are made based on the candidate's qualifications, experience, skills, and education as they directly relate to the requirements of the position, as well as internal and market factors and grade profile.

Job Location - City, State
Philadelphia, Pennsylvania
Hybrid Eligible - This position is eligible for a hybrid work schedule with a work week divided between working onsite and working remotely.

Department / School
Provost's Center

Pay Range

Salary offers are made based on the candidate's qualifications, experience, skills, and education as they directly relate to the requirements of the position, as well as internal and market factors and grade profile.

Affirmative Action Statement
Penn adheres to a policy that prohibits discrimination on the basis of race, color, sex, sexual orientation, gender identity, religion, creed, national or ethnic origin, citizenship status, age, disability, veteran status, or any other legally protected class.

Special Requirements
Background check required after a conditional job offer is made. Consideration of the background check will be tailored to the requirements of the job.

University Benefits

Health, Life, and Flexible Spending Accounts: Penn offers comprehensive medical, prescription, behavioral health, dental, vision, and life insurance benefits to protect you and your family's health and welfare. You can also use flexible spending accounts to pay for eligible health care and dependent care expenses with pre-tax dollars.
Tuition: Take advantage of Penn's exceptional tuition benefits. You, your spouse, and your dependent children can get tuition assistance here at Penn. Your dependent children are also eligible for tuition assistance at other institutions.
Retirement: Penn offers generous retirement plans to help you save for your future. Penn's Basic, Matching, and Supplemental retirement plans allow you to save for retirement on a pre-tax or Roth basis. Choose from a wide variety of investment options through TIAA and Vanguard.
Time Away from Work: Penn provides you with a substantial amount of time away from work during the course of the year. This allows you to relax, take vacations, attend to personal affairs, recover from illness or injury, spend time with family-whatever your personal needs may be.
Long-Term Care Insurance: In partnership with Genworth Financial, Penn offers faculty and staff (and your eligible family members) long-term care insurance to help you cover some of the costs of long-term care services received at home, in the community or in a nursing facility. If you apply when you're newly hired, you won't have to provide proof of good health or be subject to underwriting requirements. Eligible family members must always provide proof of good health and are subject to underwriting.
Wellness and Work-life Resources: Penn is committed to supporting our faculty and staff as they balance the competing demands of work and personal life. That's why we offer a wide variety of programs and resources to help you care for your health, your family, and your work-life balance.
Professional and Personal Development: Penn provides an array of resources to help you advance yourself personally and professionally.
University Resources: As a member of the Penn community, you have access to a wide range of University resources as well as cultural and recreational activities. Take advantage of the University's libraries and athletic facilities, or visit our arboretum and art galleries. There's always something going on at Penn, whether it's a new exhibit at the Penn Museum, the latest music or theater presentation at the Annenberg Center, or the Penn Relays at Franklin Field to name just a few examples. As a member of the Penn community, you're right in the middle of the excitement-and you and your family can enjoy many of these activities for free.
Discounts and Special Services: From arts and entertainment to transportation and mortgages, you'll find great deals for University faculty and staff. Not only do Penn arts and cultural centers and museums offer free and discounted admission and memberships to faculty and staff. You can also enjoy substantial savings on other goods and services such as new cars from Ford and General Motors, cellular phone service plans, movie tickets, and admission to theme parks.
Flexible Work Hours: Flexible work options offer creative approaches for completing work while promoting balance between work and personal commitments. These approaches involve use of non-traditional work hours, locations, and/or job structures.
Penn Home Ownership Services: Penn offers a forgivable loan for eligible employees interested in buying a home or currently residing in West Philadelphia, which can be used for closing costs or home improvements.
Adoption Assistance: Penn will reimburse eligible employees on qualified expenses in connection with the legal adoption of an eligible child, such as travel or court fees, for up to two adoptions in your household.

To learn more, please visit: https://www.hr.upenn.edu/PennHR/benefits-pay

To apply, visit https://wd1.myworkdaysite.com/en-US/recruiting/upenn/careers-at-penn/job/3600-Civic-Center-Boulevard---9th-Floor/Patent-Attorney-Agent_JR00063356