Location: Albany, NY Category: Administrative and Professional Posted On: Fri Aug 29 2025 Job Description:
FUNCTION & SCOPE:
The Research Foundation for the State University of New York (RF) seeks a licensed United States Patent Attorney with a technical background in engineering, physics, computer science/systems, mathematics, or equivalent disciplines to join the Office of Industry and External Affairs (I&EA) team based in Albany, New York. The successful candidate should have meaningful patent drafting and prosecution experience in various areas, including engineering, software, semiconductor technologies, artificial intelligence, and/or medical devices, and significant research or technical experience in one or more of these fields.
Reporting to RF's Director of Intellectual Property and Licensing with a dotted reporting line to RF's General Counsel for particular legal matters, this position will work directly with technology commercialization, business development professionals, and inventors across The State University of New York (SUNY) enterprise to identify protectable aspects of new inventions, develop and implement patent prosecution strategies, build patent estates, draft and file patent applications, conduct examiner interviews, draft Patent Trial and Appeal Board (PTAB) appeal briefs, respond to office actions, and other communications from the US Patent and Trademark Office (USPTO) to ensure the successful issuance and maintenance of patents. The successful candidate will proactively partner with professionals and inventors from across SUNY to determine current and future patent needs and maintain a very close relationship with stakeholders across the enterprise to deliver highly valued services.
A focus of the I&EA team is moving SUNY technology to market. Through direct, daily interaction with technology commercialization professionals across the enterprise, faculty (including Nobel laureates), students, small and large businesses, government, and investors, the I&EA team builds strong relationships, seizes opportunities, and enters into agreements to translate academic discoveries into commercial products that benefit society, impact public health, and improve quality of life. If you are a business-minded individual who is self-motivated, curious, enthusiastic about technology, outgoing, enjoys work, continually being challenged, and engaging deeply with inventors, then this is a great opportunity for you.
DUTIES:
Assist SUNY inventors in drafting and submitting New Technology Disclosures (NTDs) using RF's online SUNY Inventor Portal.
Evaluate and communicate patentability of inventions submitted as NTDs and conduct searches of scientific journals and patent databases.
Identify patentable inventions through regular interactions with research teams and collaborators, including evaluating inventions, conducting prior art searches, and generating and executing on corresponding patent protection strategies.
Prepare and file patent applications and reply to communications from the USPTO during the patent application process.
Represent RF before the USPTO PTAB, as may be required from time to time.
Work with foreign patent counsel and prepare letters of instruction to foreign counsel for filing and prosecution of foreign counterparts to US patent applications.
Prepare and communicate legal opinions on patentability, validity, freedom to operate, and infringement.
Support dispute resolution, litigation, and assertive licensing related to SUNY intellectual property (IP).
Review patent and patent application file histories and analyze various issues that arise during patent prosecution that could potentially impact downstream patent litigation.
Analyze and provide legal opinions on issues that arise during patent litigation.
Assist in the development, communication, and implementation of best practices for patent prosecutions, licensing, and litigation.
Collaborate with colleagues across the SUNY enterprise to build patent estates around specific industry sectors and areas of interest and develop enterprise-wide licensing strategies, including pooling or bundling to maximize the licensing opportunities for SUNY-developed IP.
Assist in drafting and negotiating IP-related sections of licensing and other contracts and documents, as needed.
Monitor and analyze competitive intellectual property.
Manage external counsel on outsourced patent preparation and prosecution matters.
Mentor fellow employees about IP matters, conduct patent and trademark training sessions on a periodic basis, and collaborate across the enterprise, exercising judgment in resolving IP-related issues and helping to guide business and technology decisions, as well as helping to instill a proactive approach through experience and foresight.
Consult with the SUNY Innovation Policy Board, periodically, as needed.
The ideal candidate will be:
Passionate - For you, this is not just another job. Our mission resonates with you, you truly believe in what we do and get energy from our collective wins. Like us, you want to make a difference. Here, you can.
Tireless - You seek to learn from others constantly, while also helping to support those who are not as well versed as you are in your technical area. As a result, you are determined to achieve your goals and relentlessly support your team while always keeping in mind that this is not your typical 9-5 job.
Gritty - You have an agile mindset, can-do attitude, a desire to "get to yes", and a willingness to tackle any task needed to get the job done. You thrive in a fast-paced and changing environments that let you flex your creative muscle and you value being a key member of a close-knit team that works hard and always has each other's backs.
Entrepreneurial - You are undeterred, no matter the situation, and pivot when you need to. You enjoy building things and serving others in working toward and achieving common objectives and goals. You are obsessed with delivering a high-quality product no matter how small the task and take real pride in your work.
Job Requirements:
SPECIAL SKILLS:
Excellent writing and communication skills.
Ability to work independently under general direction.
Strong understanding of IP and patent operations and related business tools/systems.
Demonstrated working knowledge of higher education norms and culture, with unrelenting attention to detail in written and verbal communications.
Must be self-directed, but engaged with teammates, with effective time management, organizational skills, and demonstrated resourcefulness in setting priorities and guiding people.
Ability to think strategically and creatively, to anticipate future needs, and to translate that thinking into viable, cogent plans for amplifying SUNY and serving RF's campus clients.
Demonstrated capacity for independent decision-making, understanding of entrepreneurship and commercialization best practices, and working with multidisciplinary teams on multi-faceted initiatives.
Must work well within a collaborative, team environment, and persistently maintain confidentiality.
Ability to exercise independent judgment in responding to inquiries, display tact and sensitivity, and be solution-driven.
Systems-savvy and embracing of technology.
Ability to prioritize and manage multiple projects simultaneously, with a sense of urgency.
EDUCATION & EXPERIENCE:
Registered US patent attorney in good standing before the USPTO having at least ten years of experience in drafting, filing, and prosecuting patent applications.
Experience with foreign patent prosecution, particularly in jurisdictions such as Europe and Asia.
A Bachelor's degree or higher in engineering, computer science, physics, or similar field of endeavor.
Experience or education in high-tech and startups.
Experience performing patent prosecution and opinion work. The ideal candidate would have experience working both at a law firm and for a technology company.
Additional Information:
As an Equal Opportunity / Affirmative Action Employer, The Research Foundation for SUNY will not discriminate in its employment practices due to an applicant's race, color, creed, religion, sex, pregnancy-related conditions, reproductive health decisions, childbirth or related medical conditions, sexual orientation, gender identity or expression, transgender status, age, national origin or ancestry, marital status, familial status, citizenship, physical and mental disability, prior arrest or conviction record, genetic characteristics/genetic information, predisposition or carrier status, domestic violence victim status, military status or service, veteran status, or any other characteristics protected under federal, state or local law. The Company will not discharge or in any other manner discriminate against employees or applicants because they have inquired about, discussed, or disclosed their own pay or the pay of another employee or applicant.
The Company will not discharge or in any other manner discriminate against employees or applicants because they have inquired about, discussed, or disclosed their own pay or the pay of another employee or applicant.
Review of applications will begin immediately and continue until the position is filled.
The Research Foundation for the State University of New York is not an agency or instrumentality of the State of New York. Employees of the Research Foundation for the State University of New York are not state employees, do not participate in any state retirement system, and do not receive state fringe benefits. The Research Foundation for the State University of New York operates under a contract with The State University of New York and receives no directly appropriated state funding.
