Job Details

Patent Counsel II

Company name

Organization Type

In-House

Job Type

Attorney

Years of Experience

5-9 yrs required

Location

Mounds View, MN

Date Last Verified

Oct 15,2017

Posted on

Aug 09,2017
Practice Area
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent General
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Patent Counsel II The candidate will provide intellectual property legal support to the Heart Failure business within company’s Cardiac Rhythm & Heart Failure (CRHF) division. Responsibility for handling various aspects of intellectual property (IP) for the CRHF division of the company. Preparing and prosecuting U.S. and foreign patent applications relating to Ventricular Assist Devices (VADs) and similar technologies, including self-performed work and managing and reviewing outside counsel and diligently managing a docket using the corporate docketing systems. Executing on all aspects of creation and management of intellectual property, including developing and implementing offensive IP strategies, administration and evaluation of invention disclosures, conducting various patent searches, conducting freedom-to-practice evaluations and preparing or obtaining appropriate opinions, proactively becoming cognizant of competitor products and related IP watches, conducting infringement investigations and initial invalidity analyses, and providing timely counsel on intellectual property issues. Performing IP due diligence for mergers/acquisitions. Providing support and management on patent litigation, including early pre-suit assessments. Assisting in the drafting and negotiation of agreements involving the transfer or licensing of intellectual property. Interfacing with the R&D and business development groups, including proactive development and implementation of IP strategies, invention disclosure reviews, search reports and client counseling, and participation on product development teams to stay aligned with business objectives.

Qualification and Experience

The candidate should have JD degree from a recognized, accredited U.S. law school and licensed to practice in at least one state or the District of Columbia with the ability to be admitted in Minnesota; registered to practice before the U.S. Patent and Trademark Office. Must have Bachelor's Degree in Electrical, Electro-Mechanical, Mechanical, Computer or Biomedical Engineering, Physics or similar scientific discipline. 5-9 years of IP experience required. Patent preparation and prosecution skills experience, ideally with a medical device company or with an independent law firm with a strong practice geared toward medical devices. Broad IP experience is preferred including, in addition to US patent preparation and prosecution, experience with global patent issues and practices, litigation, transactions and transactional due diligence.

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