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Carrot Peelers, Sales, Personality and Your Job Search
In-House
Attorney
Intellectual Property
Litigation - Whistleblower - CFTC
6-12 yrs required
Patent Counsel The candidate will strategically plan for the R&D patent portfolio and for growing the portfolio, together with the department. Will serve as the liaison with key technology vendors and strategic partners. Assist with the review of third-party agreements for joint development, technology sharing and licensing opportunities. Work with a group of scientists as they discover and develop new technologies and provide counsel in connection with the best methods of protecting their ideas. Be involved in the preparation and prosecution of domestic and foreign patent applications. Identify technologies that can be leveraged and, where appropriate, lead key collaborations inside company and with outside third parties. Develop key strategies for company's R&D patent portfolio growth under the AIA. Draft and review patent applications. Coordinate efforts with outside patent counsel. Respond to office actions and other prosecution matters. Attend and contribute strategic advice to group meetings for breakthrough materials. Use competitive intelligence, advise R&D on possible white space and development possibilities, licensing. Design filing strategies for the various groups within R&D in line with AIA. Educate internal clients on patents and the patent process. Prepare infringement and invalidity analyses.
Qualification and Experience
The candidate should have a J.D. degree from an accredited law school. Admission to practice in New York is preferred, in addition to admission before the USPTO. Undergraduate degree in Biochemistry, Chemistry, Chemical Engineering, or related area desired. Must have 6-12 years of relevant experience, preferably in the consumer products or pharmaceutical industries. Prior in-house experience also a plus. Should have demonstrated experience identifying technologies that can be licensed and/or patented as well as a solid technical knowledge of chemistry and/or polymer science. Must be well versed in technology development and novel approaches to discovery. Should have experience preparing and filing patent applications as well as office actions in the US and abroad. Knowledge and experience with polymer science a plus. Litigation knowledge is helpful.
Req. ID: 3997BR
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