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Do Not Be Influenced by Others’ Negative Opinions of You
In-House
Attorney
Intellectual Property
Litigation - Whistleblower - CFTC
Min 5 yrs required
Patent Counsel The candidate will participate in and support patent and intellectual property related matters for firm with an emphasis on its patent portfolio including prosecution, licensing and enforcement. Will prepare, prosecute U.S. and International patent applications in-house and with outside counsel. Review invention disclosures, portfolio analyses; work with inventors and patent review committee. Work with biomechanics, biomaterials, software and engineering teams, including proactive development of IP strategies and client counseling. Assist in assessment of IP issues, provide timely counsel on IP issues. Conduct patent landscape and third-party patent portfolio analysis. Conduct freedom-to-operate analysis. Assist with licensing and transactional matters. Review sales, promotional materials and programs in light of IP issues. Assist with competitive Intelligence gathering and analysis. Assist in post grant proceedings. Assist in developing and implementing policies and procedures relating to IP
Qualification and Experience
The candidate should have JD degree from an accredited law school. California Bar admission is essential. Admitted to practice before the USPTO is essential. Should have 5+ years of patent prosecution experience, with 3+ years at a major law firm; preparing, filing and prosecuting applications for patents on an international basis Bachelor’s Degree in Biomedical Engineering, Computer Engineering, Computer Sciences, Electrical Engineering, Mechanical Engineering or other technical degree with demonstrated ability to draft medical device and software related patent applications is essential. Should have an in-depth understanding of the rules, regulations and procedures of the U.S. Patent and Trademark Office in pre and post grant procedures. Should have knowledge of IP law and practice, including current judicial decisions and administrative rule changes and implementations Experience with litigation support, including developing and implementing IP strategies, and conducting infringement investigations and initial analyses is desirable. Experience with agreements involving technology and intellectual property matters, including drafting intellectual property agreements or clauses when requested is desirable. Medical device or software experience is highly desirable.
Ref (P123364)
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