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Intellectual Property Attorney in Orange, CA

KaVo Kerr Group Oct 24,2016 Jul 28,2016 Location USA Orange CA
This job is expired...

In-House

Attorney

Intellectual Property

Litigation - Whistleblower - CFTC

5-7 yrs required

Profile

Senior Counsel, Intellectual Property The candidate serves as legal advisor to the company's worldwide portfolio of dental consumable, equipment and implant companies regarding intellectual property matters, including patents, trademarks, trade secrets, and copyright. Will provide counseling with regard to intellectual property for the company's products, such as orthodontic devices, dental implants, composites and adhesives. Work closely with research and development and business development functions on a broad range of strategic and day-to-day activities, including patent prosecution and freedom to operate analyses. Align IP strategies with business plans and with providing support to technical personnel in the development and execution of our strategy, including organizing and supporting Patent Review Boards, and the management of outside IP counsel, IP litigation, IPRs and other dispute resolution issues. Draft and review, and supervise the drafting and review by outside counsel and internal staff, of patents and patent applications; trademark and service mark applications; contracts and related documents for the protection of trade secrets and proprietary information; IP assignments, licenses, and royalty agreements; and all other IP transactions. Identify potential patentable concepts of commercial significance in the new products under development. Conduct and supervise others in conducting FTO analyses for new products in development. Identify and evaluate IP risks associated with potential acquisition targets, including IP ownership issues, transferability of licenses and FTO's for the target's product offerings. Analyze IP dispute/litigation situations, with emphasis on early identification of strengths and weaknesses, and opportunities for resolution. Convert IP legal issues into readily understandable business issues. Train in IP legal issues and best practices. Audit activities for compliance with IP Policy. Develop guidelines and practices to assist in compliance. Analyze IP laws, regulations and filing requirements affecting the business. Oversees patent, trademark, trade secret litigation; negotiates, supervises, or provides advice regarding the negotiation of settlements involving IP issues or transactions on behalf of the company.

Qualification and Experience

The candidate should have graduated from a top law school. Technical degree in mechanical, electrical engineering or related field is required. Should be registered to practice before the USPTO. Must have 5-7 years of law firm and/or in house IP practice. Should preferably have current/former practice providing counsel to global medical device business, exposure to litigation, licensing and M&A. Experience with FDA and other notified body regulated devices is desired. Experience with counterfeit and grey market goods is an asset. Foreign language capability a plus.

Additional info

Ref. #: KAV000555

Company info