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Years of Experience
Date Last Verified
ProfilePatent Counsel / Senior Patent Counsel The candidate independently supports all aspects of firm’s legal needs, with a focus on patents, trademarks, trade secrets, and IP agreements. Assists in the development and implementation of a global intellectual property strategy in line with firm’s business goals (together with internal IP Advisory Board and external advisors). Collaborates with research and product development teams to identify and capture high value innovation. Manages internal and external resources for the preparation, filing, prosecution, strategy and management of U.S. and international patent, trademark, and trade secret portfolios. Performs patentability, freedom to operate, infringement, validity and product clearance analyses as needed for research and commercial activities and recommends alternative actions, when needed, in support of business objectives. Conducts landscape studies and provides value/risk assessment on third party IP estates. Monitors and analyzes competitive intellectual property and product offerings. Assists and advises the business and legal teams in structure, negotiation and drafting of various IP agreements. Supports corporate IP awareness through IP educational efforts.
Qualification and Experience
The candidate should preferably have U.S. Law degree and admission to a U.S. state Bar in good standing. Registered to practice before the U.S. Patent and Trademark Office is preferred. Licensed patent attorney with 3-7 years of experience in intellectual property management and client counseling with prior in house experience is strongly preferred. Technical background is preferred in life science and/or bioinformatics (ideally, experience in computer science, algorithm and software patent protection together with life science or bioinformatics experience). Experience developing and implementing IP strategies, conducting freedom to operate analyses, and IP portfolio analyses is preferred. Experience with global patent protection, patent appeals, post-grant proceedings, and European opposition proceedings is a plus.