Job Details

Patent Attorney

Company name

Organization Type

In-House

Job Type

Attorney

Years of Experience

Min 3 yrs required

Location

Germantown, MD

Date Last Verified

Oct 13,2017

Posted on

Sep 13,2016
Practice Area
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Life Sciences >> Biotechnology
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Patent Attorney The candidate will be responsible for proactive counseling of inventors and project leaders with respect to patent and trade secret matters and to identification of potential new inventions; provide timely advice to IP Counsel regarding intellectual property issues, including patentability, freedom-to-operate, infringement, contractual obligations and risk/benefit analyses which may impact the Company’s intellectual property; support business development efforts, including IP due diligence for prospective opportunities; keep IP Counsel informed of competitive intellectual property developments and relevant business advice, including intellectual property law updates as they affect the company’s business or opportunities; prepare, file and prosecute U.S. and foreign patent and trademark applications and interact with external counsel in the performance of such; coordinate with staff as needed to apprise them of developments in patent protection law and on-going efforts by the Company to ensure patent protection of new products; work with outside counsel on matters should the need arise; work on assignments independently that are complex in nature where considerable judgment and initiative are required in resolving problems and making recommendations; develop and implement patent strategy consistent with commercial goals and regulatory requirements; provide timely advice to management regarding intellectual property issues, including patent ability, freedom-to-operate, infringement, contractual obligations and risk/benefit analyses which may impact the Company’s intellectual property; draft, negotiate, review and maintain various kinds of agreements, including license agreements, research agreements, material transfer agreements, sponsored research agreements, CRO agreements, confidentiality agreements and any other agreements which involve any aspect of the company’s intellectual property position; support business development efforts, including IP due diligence and contract drafting and negotiation for prospective opportunities; keep management informed of competitive intellectual property developments and relevant business advice, including intellectual property law updates as they affect the company’s business or opportunities; prepare, file and prosecute U.S. and foreign patent and trademark applications and manage external counsel in the performance of such; review and revise draft press releases, scientific presentations, publications, advertising and product label materials to protect and achieve maximum IP protection; coordinate with staff as needed to apprise them of developments in patent protection law and on-going efforts by the Company to ensure patent protection of new products; manage intellectual property litigation and direct outside counsel in matters should the need arise.

Qualification and Experience

The candidate should be a registered Patent Attorney, preferably with a J.D. from a top law school and member of the Bar in good standing required; 3+ years of total experience, including patent prosecution, opinion work, and license drafting in microbial platforms or agriculture biotechnology; have undergraduate degree in life science discipline; demonstrated track record of success in developing and negotiating various contractual agreements, including but not limited to research agreements, in-licensing and out-licensing agreements; ability to understand and execute on the company’s mission and values; maintain a high degree of ethical standard and trustworthiness; ability to think and adapt to a rapidly changing environment; able to reach rational conclusions through complex processing of information; fosters innovation through creative solutions; successful at communicating in both oral and written forms; effective organization and implementation of group projects; up-to-date knowledge on industry current events; maintain a high degree of accuracy and attention to detail; energized by accomplishments and excellence in the workplace; capable of high performance in independent work as well as in team setting.

Additional info

Reference Id:1327

Company info

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