Location: Emeryville, CA
The Patent Attorney/Agent will join Berkeley Lights’ Patent Group and report to our Sr. Director of Intellectual Property. Responsibilities will include:
- Preparation and prosecution of US and foreign patent applications in a collaborative environment; the applications cover Berkeley Light’s proprietary microfluidic devices, including microfluidic chips, systems & instruments that interface with such devices, software for performing automated functions on such systems & instruments, and methods of manipulating and processing cells and particles on such devices, including biological workflows performed on microfluidic devices.
- Management of US and foreign counsel involved in patent filings and prosecution.
- Tracking technology development by R&D groups at BLI.
- Participation in the formation and implementation of Berkeley Lights’ IP strategy, policies and processes.
- Analysis of competitive intellectual property, and identification of scientific and technical issues potentially impacting Berkeley Lights’ IP strategies.
- Assisting with education of personnel in various areas of intellectual property law such as protection of confidential information and trade secrets.
- Assisting with analyses regarding patentability, freedom to operate, infringement and validity matters.
- Assisting with transactional work relating to the use, transfer or ownership of IP, including non-disclosure, material transfer, services, research, collaboration, and license agreements.
Desired Skills & Experience
- Admitted to practice before the USPTO.
- 3-5 years of IP experience as in-house patent counsel or in a reputable law firm, with specific experience relating to technology at the interface of biology and devices/machines/software considered a significant plus.
- Degree in physics, biology, cell biology, biomedical engineering, bioinformatics, or a related discipline.
- Must be comfortable learning about and pursuing patent protection for devices that include semiconductor and/or other electrical components; working knowledge of (i.e., lab experience in) biology, particularly cell biology, considered a significant plus.
- Must have ability to work collaboratively with existing patent professionals, as well as members of business and R&D groups.
- Must enjoy the challenge of building a strong patent portfolio!
- Attention to detail
- Strong knowledge of intellectual property laws.
- Excellent verbal and written communication skills.
- Strong organizational skills; ability to prioritize responsibilities; flexible and able to multi-task.
- Must be able to work in a fast paced environment, adapt to rapidly changing priorities, manage heavy workflow, set priorities and deliver results.
- If an attorney, a J.D. degree and admission to California bar.