Job Details

Patent Counsel

Company name

Organization Type

In-House

Job Type

Attorney

Years of Experience

Min 4 yrs required

Location

Tinton Falls, NJ

Date Last Verified

Sep 19,2017

Posted on

Sep 08,2017
Practice Area
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Hard Sciences >> Physics
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Hard Sciences >> Electrical Engineering
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Hard Sciences >> Computer Science
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Hard Sciences >> Computer Engineering
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Patent Counsel The candidate will report directly to the Chief IP Counsel. Will work closely with internal teams to identify new inventions. Prepare and prosecute high quality patent applications protecting company's products and services worldwide. Closely supervise outside counsel responsible for aspects of company's patent portfolio. Assist in budget preparation and forecasting. Provide infringement, validity, and freedom to operate opinions based on prior art search results and other analysis. Identify strategic business value and market dynamics associated with various technologies and competing products. Advise internal stakeholders at various levels regarding IP issues. Provide IP support as a member of cross-functional legal teams in licensing, litigation and other matters.

Qualification and Experience

The candidate should have a J.D. degree from a top tier ABA-approved law school. Should have a BS and/or advanced degree in Electrical Engineering, Computer Engineering, Physics, Computer Science, or equivalent work experience in the software field. Must be a partner-track or equivalent in-house attorney with 4+ years of intellectual property experience with a large law firm or major corporation. Prior non-legal work experience in software development is a plus. Proven track record of successful software patent prosecution and patent litigation or litigation support is required. Experience supporting transactional teams on general IP and M&A matters, drafting IP licenses and product development agreements, and participating in related negotiations is needed. Familiarity with Open Source licensing issues is essential. Should be experienced in software patent portfolio generation, as well as advising legal and business teams. Must be registered to practice before the USPTO.

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