Patent Search Analyst – Mechanical Engineering Specialist

Location: Rochester, NY

IP.com is an intellectual property solutions provider that helps organizations make complex business decisions around their innovations. Our industry-leading portfolio of services enables businesses to increase revenue, optimize operations, and manage IP risk through insightful data analytics and publishing.

JOB SUMMARY

The Patent Search Analyst conducts patentability, infringement, validity, freedom-to-operate, clearance, and patent landscaping searches.

DUTIES

  • Performs qualitative analysis of patent and non-patent technical literature
  • Performs patent searches: mainly patentability, freedom to operate, with some validity, and landscape searching using patent databases provided.
  • Must be able to analyze and communicate analysis of results.
  • Assists sales team as a subject matter expert when called to assist in the sales process
  • Seeks guidance from and collaborates with team members on IP related matters in order to produce the highest quality product possible
  • Manages time and workload at the direction of management, scheduled delivery dates, and customer due dates
  • Seeks training from more senior members to advance IP research skill set
  • Communicate effectively with customers in determining the scope of searches and draft informative reports that clarify and summarize search results.
  • Maintain proficiency with patent laws and regulations, commercial patent databases and other proprietary databases that disclose technical publications.
  • Conduct long-term patent landscape studies to identify trends in a technology field, deliver competitive intelligence and identify potential research and licensing opportunities.
  • Perform Evidence-Of-Use studies by analyzing products currently used in the market that may be infringing on a patent of interest.
  • Perform qualitative analysis of patents and patent portfolios from a legal, technical and business perspective.
  • Analyze patent file histories
  • Identify potential licensees

TECHNOLOGY/ EQUIPMENT/ TOOLS

  • Expert level user of commercial patent search tools and analytical software
  • Expert level user of MS Office software

QUALIFICATIONS

Education and Experience Requirements

  • Must have the ability to comprehend the application of Mechanical Engineering and mechanical design to a wide variety of fields of Industry, including transportation, energy, construction, manufacturing, biomechanics, robotics, consumer products and appliances, HVAC systems, power tools, oil & gas exploration, and aerospace.
  • Bachelor’s degree is required in Mechanical Engineering
  • 3-5 years of Prior Art searching experience
  • Research and analysis experience with a law firm, corporate IP office or search firm
  • Compliance with ITAR/Export Control regulations, which can be demonstrated by
    US citizenship.

Skills and Competencies Requirements

  • Knowledge of patent law, regulations and the MPEP
  • Understands all sections of a patent, and the importance of each section from a legal prior art search perspective
  • Expert in key term searching and constructing structured Boolean search queries
  • Excellent attention to detail, analytical and critical thinking, proof-reading abilities, interpersonal communication and organizational skills
  • Expert in reading, interpreting, and extracting key concepts from invention disclosures, patents, and technical papers
  • Exceptional oral communication, written communication and customer service skills
  • In-depth knowledge of technical literature in the area of subject matter expertise.
  • Highly skilled developing a search methodology and in conducting searches.
  • Strong time management skills and dependable in completing quality projects against deadlines.

Will allow telework from home with periodic travel required to corporate office.