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0-5 years of experience
Carried searches for commercial and government clients: Patentability, Freedom to Operation, Validity, Landscape, PCT examination
- Effectively utilized variety of patent and scientific databases and open sources
- Communicated with clients and company leadership to optimize efficiency of the search team
- Delivered final reports, summaries and recommendations to company clients
- Acted as individual contributor and as a team lead, depending on the nature and complexity of the case
- Effectively worked with both on-site and remotely located team members
0-5 years of experience
- Predominantly performed invalidity, clearance, and patentability searches in medical, petroleum, automotive, and miscellaneous electro-mechanical
- Received specialized training in Minesoft PatBase, Questel Orbit, Thomson Innovation, ProQuest, Dow Jones Factiva, and Engineering Village
- Lectured on searching techniques and strategies
- Awarded high praise for invalidity projects on cellphones, conveyors, electrical connectors, annuloplasty rings, LED housings, clearance projects on roofing, medical beds, pipe-laying vessels, and a landscape project on touchscreens
6-10 years of experience
Performed Patent Analyst duties for all BDS by analyzing contract documentation for reporting requirements, preparation and submittal of US patent applications, preparation and submittal of interim and final patent reports, and reporting of invention disclosures for both national and foreign filing.
- Ensured compliance to Government contract clauses involving new technology and subcontracts. Knowledge of FAR, DFAR, NAVAIR, DEAR and NASA clauses and its patent clauses.
- Participated in a team on a project to automate the Patent Reporting Contract Summary (PRCS) form. This dramatically reduced the time for the contract administrator to process and increased Boeing compliance with USG reporting requirements.
- Conducted monthly search for new contracts in CCS. Ability to input into CCS if needed.
- Prepared monthly status report and metrics to track the amount of incoming and outgoing inventions, interim & final patent reports, and capture delinquent submittals plus future work to be processed.
- Reviewed CPA (Computer Packages Associated) Memotech, Intellectual property database for inventions; maintain a data base containing contract, subcontract and inventions.
- Developed presentation on Reportable Patent Clauses and Subcontract Flowdown and Waivers. Visit local sites to conduct training. Audience includes contract administrators, supplier management and program managers.
- Iron Mountain Representative for records storage
0-5 years of experience
Performed and conducted searches relating to patentability (novelty), validity and freedom-to-operate.
- Interacted effectively with customers in determining the scope of searches.
- Drafted informative reports that clarified and summarized search results.
- Maintained proficiency with commercial patent databases and other proprietary databases that disclose technical publications.
- Conducted and performed long-term patent landscape studies.
- Identified potential research and licensing opportunities.
- Conducted qualitative analysis of patents and patent portfolios.
- Performed Evidence-Of-Use studies by analyzing products currently used in the market that may be infringing on a patent of interest
- Provided strategic patent plans and references to clients.
- Led, mentored, trained and monitored the performance of the junior staff and their work.
- Managed all the Chinese Patent Search And Analysis.
0-5 years of experience
Examined international PCT applications for compliance with WIPO policy and PCT Rules/Articles.
- Reviewed completed applications for compliance with USPTO contract and quality requirements.
- Strategically performed searches on the novelty/inventive step/industrial applicability of applications.
- Coordinated multi-analyst search teams to ensure deadline compliance for large applications.
- Maintained proficiency with commercial/proprietary patent and technical publication databases.
0-5 years of experience
Performed searches and written opinions according to a USPTO contract for Patent Cooperation Treaty (PCT) in fields of wireless communications, image processing, interactive video distribution, database, computer power, networking and e-commerce
- Performed searches using Patentability, Validity, Clearance, Freedom-to-Operate and Infringement in the fields of wireless communications, image processing, interactive video distribution, database, computer power, networking and e-commerce
- Conducted scientific and technical intelligence and consultation related to Intellectual Property
- Compiled a list of proximity operators for Patent Search Tools
0-5 years of experience
- Performed patentability and FTO studies – reviewed invention records, communicated with inventors, conducted prior art searches in various patent databases, and prepared charts comparing prior art and current invention
- Prosecuted patent applications in a wide range of areas – analyzed references cited in the Office Actions received from USPTO and drafted amendments, drafted provisional patent applications, and prepared forms for filing provisional, non-provisional, and PCT applications online with USPTO
- Interacted with foreign associates in China, Japan, Europe, etc. – drafted instructions letters regarding national phase filings and responding to foreign Office Actions
- Assisted attorneys with legal research on patent laws and rules
- Utilized CPi for docket management and generated docketing reports for attorneys and clients
0-5 years of experience
- Established Invention-Examination policy from an engineering standpoint
- Considered legal matters affecting inventiveness, acceptability and entitlement
- Analyzed and synthesized industry research findings and prepared briefings based on the analysis
0-5 years of experience
Able to review Electrical Engineering-based Patent Cooperation Treaty (PCT) patent applications for potential patentability.
- Able to classify patent applications using the United States Patent Classification, International Patent Classification and Cooperative Patent Classification Schemes.
- Thoroughly searched for prior art, including non-patent literature, using various patent searching tools and databases.
- Successfully completed International Search Reports (ISRs).
0-5 years of experience
- Conducted thorough searches of USPTO database to provide clients with comprehensive data for patentability, infringement, validity, clearance, and state of the art patent analyses
- Analyzed patents under a broad range of technologies such as: nanotechnology, materials science, surgical/medical devices and methods, semiconductors, optics and optical systems, construction materials and methods, various types of mechanical devices, and others
- Customized each patent search and analysis to meet the individual client’s needs
- Worked independently under minimal supervision
0-5 years of experience
- Responsible for discussing with customers search requests, determining search criteria for the search requests, utilizing search engines to obtain documentation pertaining to the search, create reports to provide to the customer explaining the documentation found.
- Worked collaboratively with fellow analyst to facilitate completion of searches.
- Reviewed fellow analyst reports for accuracy and completeness at the request of Directors.
0-5 years of experience
- Immediately participated in the USPTO pilot contract program upon starting December 2005 to examine and provide first action rejections on PCT applications in myriad technologies across mechanical and electrical engineering fields including solar and other green energy systems, medical devices, wind turbine design and control, downhole systems and components, and green land vehicle technologies
- Performed patentability, validity, state of the art, and freedom to operate searches across a wide array of technologies including mechanical engineering, electrical engineering, and medical devices using search tools such as USPTO EAST, PatBase, MicroPatent, LexisNexis, Thomson Innovation, IEEEXplore, PubMed, Engineering Village, and Dialog among others
- Conducted wide ranging landscape studies to analyze major players in various art areas, inventive concept trends and potential whitespace in the market
- Contributor to the patent searching book by David Hunt, Matt Rodgers and Long Nguyen. Patent Searching: Tools and Techniques. Hoboken, New Jersey: John Wiley & Sons, 2007.
0-5 years of experience
Conduct extensive analysis on patent portfolios involving various software, data storage, telecommunication, wireless device, semiconductor, hardware, and medical device patents
- Perform preliminary infringement analyses, prior art searches, and due diligence on patent portfolios
- Prepare infringement contentions, licensing presentations, affidavits and strategic prosecution plans
- Incorporate and utilize patent analyses in multi-million dollar licensing projects
- Collaborate with outside counsel in day-to-day case activities, mock trial and deposition proceedings
0-5 years of experience
Responsible for IP & technology analysis
- Strategically perform searches relating to patentability (novelty), validity, freedom-to-operate and infringement.
- Communicate effectively with customers in determining the scope of searches and draft informative reports that clarify and summarize search results.
- 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.
0-5 years of experience
Responsible for IP & technology analysis
- Strategically perform searches relating to patentability (novelty), validity, freedom-to-operate and infringement.
- Communicate effectively with customers in determining the scope of searches and draft informative reports that clarify and summarize search results.
- 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.
6-10 years of experience
- Perform PCT searches and written opinions for the USPTO as part of the PCT contract that Landon IP has with the USPTO
- Perform searches and analysis on a variety of technologies in mechanical engineering including engines, medical devices, vehicles, utilities, tools, machinery, gas processing, static structures, well development, husbandry, pumps, heat exchangers, compressors, fluid handling, gaming devices, and many other areas
- Reviewed PCT cases completed by other analyst
0-5 years of experience
- Process Patent Cooperative Treaty applications.
- Research and analyze prior art and draft reports regarding patentability opinions.
- Strategically perform searches relating to patentability (novelty), validity, freedom-to- operate and infringement by use of East databases and Internet.
- Conduct long-term patent landscape studies to identify trends in a technology field, deliver competitive intelligence and identify potential research and licensing opportunities.
- Maintain proficiency with commercial patent databases and other proprietary databases that disclose technical publications.
- Prepare and process Patent Cooperative Treaty applications directed to communication apparatuses and methods according to PCT practices.
0-5 years of experience
- Conduct Freedom-to-Operate analysis and create Intellectual Property (IP) Landscapes for non-profit organizations through use of public and private patent databases
- Research Assignees and scope of Intellectual Property ownership of organizations through reading of claims, abstracts, prosecution
- Employ Thomson Innovation index to identify and analyze key competitors and generate visual representations of data through
- Utilize GenomeQuest database to search for and identify existing patents with gene or protein sequences
- Access USPTO Patent Application Information Retrieval (PAIR) system to gather and review related application statuses and documents within Image File Wrappers
- Use NCBI Gene and Protein Basic Local Alignment Search Tool (BLAST) databases to explore client sequence functions
- Analyzed approximately 300 patent filings in biofuel and agriculture industries and communicated findings directly to client through final
0-5 years of experience
- Reviewed 2-3 device and formulation applications per week in chemistry and chemical engineering technologies
- Created 30+ technical reports with explanations of patentability acceptance and/or rejection
- Performed advanced patent examining functions on a daily basis such as prior art searching, recognition of potential multiple inventions in a single application, and discernment of novelty vs uniqueness in a potential invention
6-10 years of experience
- Strategically perform searches relating to patentability (novelty), validity, freedom-to-operate and infringement.
- Draft invention disclosures and patent applications, as required.
- Communicate effectively with customers in determining the scope of searches and draft informative reports that clarify and summarize search results.
- Maintain proficiency with 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.
0-5 years of experience
Manage and administer all aspects of patent prosecution and patent related matters in the United States and foreign jurisdictions.
- Communicate with inventors, licensees and attorneys to facilitate maximum patent protection for the university’s intellectual property.
- Attend to payment of annuities for pending and issued patents.
- Research intellectual property laws in different jurisdictions. Answer question about licensees’ portfolios in relation to patent matter, terms of license agreements, etc.
0-5 years of experience
Manage and administer all aspects of patent prosecution and patent related matters in the United States and foreign jurisdictions.
- Communicate with inventors, licensees and attorneys to facilitate maximum patent protection for the university’s intellectual property.
- Attend to payment of annuities for pending and issued patents.
- Research intellectual property laws in different jurisdictions. Answer question about licensees’ portfolios in relation to patent matter, terms of license agreements, etc.
0-5 years of experience
- Patent searches, experience data mining chemical, biological and pharmaceutical data for a variety of clients.
- Compiling and organizing research projects based on legal principles.
- Minding timely deadlines.
- Manage a docket of international patent applications (PCT) covering pharmaceutical compounds, formulations and medical devices delivering pharmaceuticals, foods and nutraceuticals, supplements, nanotechnology, bio-fuels, inorganic and organic processes.
- Proficient at searching various web based search engines as Patent Databases such as EAST and WEST databases, and STN for searching chemical compounds, DIALOG, Google Patents, Google Scholar.
0-5 years of experience
Prepare claim charts for patent infringement lawsuits.
- Research and prepare responses to IPR actions.
- Evaluate complex patent portfolios for licensing value and litigation suitability.
- Assist in preparing and conducting licensing negotiations.
- Conduct general patent litigation research, including developing infringement reads, locating infringing products, and patent due diligence.
0-5 years of experience
Conduct research and analysis for Patentability, Invalidity and FTO client projects in Life Sciences, Mechanical and Petroleum Engineering.
- Communicate and participate in individual and multi-specialty team research projects.
- Write, review and deliver client specific reports within time sensitive boundaries.
- Create and assemble training materials for specific research tools for internal use.
0-5 years of experience
Search & Patentability – thorough search of prior art in the patent and literature domains around the inventive concepts proposed, and writing a report of such findings.
- Validity Studies – similar to the above, but the search focuses upon existing patent claims; the objective being to discover prior art disclosing elements of the patent’s claims.
- Patent Applications – writing the Abstract, Introduction, Summary, Detailed Description, and Claims of new patent applications.
- Response to Office Actions – writing arguments and remarks as to why the client’s patent is novel and not anticipated or obvious over the prior art that the examiner is citing. Sometimes amendments to the claims may be necessary.
- Response to Re-Examinations – similar to the “Office Actions”, but occurs after a patent has been granted.
0-5 years of experience
- Perform technical patent review and analysis on a wide range of technologies.
- Apply engineering/technical analysis expertise to determine patentability (novelty) elements.
- Perform researches for efficiently locate information on the internet and specialized search engines.
- Create various kind of reports providing judgment and suggestions regarding the inventions.
0-5 years of experience
Tactically perform patent searches relating to patentability (pre-filing), validity and infringement of technology in the area of Information Security, Cryptography, Electrical Communication such as cellular, telecommunication, networking, TCP/IP Layers, analog/digital circuits and related art.
- Draft informative reports that clarify and summarize search results.
- Perform qualitative analysis of patents from a legal, technical and business perspective.
- Conducting intensive search to EAST, ORBIT and Non-Patent Literature (NPL) databases.
0-5 years of experience
Landscaping analysis of technologies in medicine, biotech, chemical engineering, material science and mechanical fields.
- Conduct PCT Article 18 examination of international patent applications at the request of International Search Authority (ISA), establish International Search Reports and Written Opinions by PCT Article 43. The examination includes evaluation of the issues of patentability, invention description and claim support, new matter, utility, invention unity, formalities etc. Perform Accelerated USPTO Examination, Freedom-to-Operate, State-of-the-Art, Infringement, Validity, Opposition, Patentability searches of prior art.
- As a technical lead, maintain and advance scientific background by continuous scientific research in the fields of expertise. Filed a patent application US 13/067,798 on June 28, 2011, currently pending, titled “Methods of pulsed nuclear energy generation using piston-based systems”. Explored and published a treatise on a possibility of miniaturized fission-fusion hybrid reaction core with positive fusion yield in “Nuclear Engineering and Design”, Volume 241, Issue 1, January 2011, Pages 59-66.
- Participate in business development, estimate and proposal writing.
0-5 years of experience
- Provide prior art searches and analysis for customers regarding pre-filing of a patent application, current litigation, want to make, use, sell or import new product, and understanding the full market space of a product and the potential white space of a technology in which to further develop.
- Search in multiple technology areas including: Mechanical Engineering, Materials Science, Manufacturing Engineering, Process Engineering, and Medical Devices.
- Perform PCT international searches and prepared first rejection written opinion.
- Utilize multiple databases for patent and non patent literature searching such as: USPTO East System, USPTO PAIR, Minsoft PatBase, LexisNexis Total Patent, Thomson Innovation, MicroPatent, Elsevier Engineering Village, IEEE, ScienceDirect, DIalogPro, Delphion, IP.com, etc.
0-5 years of experience
- Performed searches of mechanical engineering patent and non-patent literature for customers relating to patentability, validity, freedom-to-operate, infringement, and state of the art projects, operating in a deadline-based environment and gaining proficiency in US Patent Classification, European Patent Classification, and International Patent Classification systems.
- Conveyed search results in written search reports and bibliographic databases, utilizing advanced Excel and Word techniques.
- Examined US-designated Patent Cooperation Treaty (PCT) cases in the area of manufacturing machinery, with minimal training or supervision.
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Patent Analyst
Last edited by: Gabriela Barcenas, CONTENT STRATEGIST -
Gabriela Barcenas
CONTENT STRATEGISTGabriela is a Certified Professional Resume Writer (CPRW) and career adviser. With 10 years of digital media experience and five years of resume writing expertise, her publication history includes fashion, education, travel, social justice, equitable design and career advice.
