Principal Patent Engineer

Donaldson Companies Bloomington , MN 55431

Posted 2 months ago

The Patent Engineer will provide support for Intellectual Property related tasks as a core member of the Advanced Research and Development team. This role will also support the Legal Team in the development and prosecution of intellectual property. Additionally, the Patent Engineer will conduct the required intellectual property research and analysis needed to support our global IP positions through consultation with inhouse patent attorneys.

ESSENTIAL JOB FUNCTIONS

  • Assist with responding to Office Actions during prosecution (e.g. patent examination).

  • Seek out new patentable inventions through collaborative interaction with our global R&D teams in the U.S.

  • Administrate existing record of invention and patent development process in accordance with corporate strategy

  • Monitor, analyze and benchmark 3rd party patent trends in technology fields of interest

  • Execute and/or assist with patent clearance searches for new product designs in the R&D cycle using patent database software

  • Administrate patent risk assessments & mitigation with patent attorneys as needed

  • Create and present clear and concise patent search/analysis reports to R&D engineers or corporate managers

  • Facilitate the coordination of drafting technological legal contracts (e.g. IP related articles in joint-development agreement, non-disclosure agreement or license agreement etc.) between engineers and attorneys.

KEY COMPETENCIES

  • Advanced knowledge MS Office Suite software (Word, PowerPoint, Excel, Outlook)

  • Detail and process oriented

  • Excellent communication skills with an ability to communicate patent and IP concepts and challenges

  • Energic, curious & engaging personality who can interact well within a team of scientists and engineers

  • Ability and willingness to learn new technologies and actively participate in the invention process

  • Proven ability to meet legal deadlines

Education:

  • Degree in science or engineering with preferred expertise in polymers, coatings and nonwovens

  • Patent Agent Certification preferred but not required

Experience:

  • Experience in: scientific method, scientific writing, patent prosecution, patent search, patent competitive analysis

  • Expertise in Intellectual Property Management or Intellectual Property System/Law

  • Engineering experience in a corporate environment preferred

Other Requirements:

  • Strong technical writing skills to describe new inventions clearly and concisely

  • Working knowledge of professional patent database software

  • Knowledge and understanding of fundamental patent terminology, processes, requirements and systems

  • Strong logical analysis skills to be able to compare inventions or product designs

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Principal Patent Engineer

Donaldson Companies