A counsel-level patent attorney is generally a more senior level patent attorney who works in a law firm setting.Patent attorneys handle legal matters relating to patents, which are ownership interests in scientific inventions. Patent attorneys are lawyers in the states in which they practice and also are members of the federal Patent Bar.Some patent attorneys litigate patent infringement cases in federal court.Other patent attorneys work in the patent prosecution area, which means they help clients prepare, file and prosecute patent applications with the USPTO. Patent attorneys are scientists as well as attorneys and generally have graduate degrees in mechanical engineering or in one of the hard or life sciences.
Here are a few sample patent counsel job descriptions:
The candidate will evaluate the patentability of innovations. Will prepare, draft and file patent applications. Work closely with attorneys and different business teams. Perform research and analysis, and provide guidance on a variety of patent and IP-related issues. Act as liaison for interdepartmental initiatives. Interact with outside counsel on a regular basis.
The candidate should have a Bachelor's degree in a science discipline. Must be registered to practice as a Patent Agent with the USPTO. Should have 3+ years of patent drafting and prosecution experience at a law firm or technology company. Strong technological background and familiarity with both hardware and software needed.
Patent Counsel (Director Designate)
The candidate will be responsible for all IP issues including patent prosecution, licensing, technology transfer work, opinion work and counseling scientists and other professional groups on IP issues. Advanced degree in computer sciences or equivalent is a key advantage. Should have 5+ years of intellectual property experience in a law firm or corporate legal setting and admission to practice before the USPTO.
Seeking a Senior Corporate Patent Counsel with 6+ years of experience. Candidate will counsel clients, conduct third party IP investigations and manage outside counsel on preparation and prosecution of patent applications. Will be working with technologies including; web services, data storage, mobile applications and e-commerce.
The candidate will draft patent applications, supervise outside counsel, conduct infringement and clearance analysis, interact with inventors and management on a variety of IP matters as well as conduct prior art search, support litigation and advise on general client matters related to patent matters. Should be a USPTO patent attorney with 3+ years of experience in preparing and prosecuting both US and foreign patent applications. Must have an electrical background.
Associate Patent Counsel
The candidate will advise the client in developing the U.S. and international patent portfolios. Will work with the inventors and business leaders of the company and provide legal advice regarding the company's Intellectual Property Rights. Will also strategize with these team members to lead patent portfolio reviews. Should manage a portion of the patent portfolio and analyze and give direction to the businesses to determine strategic placement best for the company. Must have 3+ years of experience in drafted patent applications and has a solid open source software understanding, will excel in this role.
In House Patent Counsel- Biotech
The candidate will prepare and prosecute patent applications, manage a patent portfolio and draft opinions. Will work with technologies including, small molecule, biologics and drug-device products. Should have 3+ years of experience and registered with the USPTO.
The candidate work will include patent preparation and prosecution, client counseling, due diligence and managing outside counsel.Should have 5+ years of experience and a background in Electrical Engineering, Physics or Computer Science required.
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