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Years of Experience
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Senior Patent Counsel Duties: Be responsible for managing invention disclosures, drafting patent applications and developing prosecution strategies for patent portfolio, domestic and foreign, to build significant IP value from inventions. Also responsible for timely filing and approvals on trademarks and copyrights as required. Conduct prior art searches and FTO opinions, including providing guidance to R&D and data analytics personnel to ensure timely completion of projects. Work with scientists and engineers early on in the development process and provide advice to ensure that new technology is efficiently managed and appropriately protected, monitor published patents in the industry, and advise on FTO issues in the product pathway. Assist management with IP due diligence activities as requested. Work with business counterparts to identify and provide advice regarding legal risks and issues, including training on IP matters, managing trade secrets and other related issues. Assist senior members of the legal department with other legal needs of the company as necessary and contribute to the overall legal function, including IP transactions and joint technology development. Supervise and manage outside counsel efficiently and effectively. Will be a critical member of the Legal Department, providing direct support to the General Counsel and to a variety of business functions, including Research & Development, Data Analytics, Product, X collaborations, Business Development, as well as providing support as needed by other attorneys on a wide variety of matters. Will work on a wide variety of Intellectual Property (IP) matters including: Patent Preparation & Prosecution, Freedom to Operate and Prior Art searches, and Due Diligence. In addition, this individual will help plan, develop and implement overall goals and strategy for IP portfolio to meet agreed performance plans.
Qualification and Experience
Qualifications: JD Degree with a Biology undergraduate/graduate degree, preferably Molecular Biology, Biochemistry or Immunology. Patent agent would be considered. Experience with biotechnology and/or medical devices is preferred. Admission to practice law in at least one state and the Patent Bar 3-7 years of experience domestic and foreign patent filing and prosecution, at least two of which at a major law firm. Preferred experience also includes analyzing invention disclosures and drafting clearance/FTO opinions and in exposure to litigation and ancillary transactional areas with growing responsibilities preferably in the biotechnology and/or advanced diagnostics field. Experience with Next Generation Sequencing, bioinformatics, microfluidics and advanced diagnostics a plus. Pragmatic judgment, particularly in determining the significance of legal matters and effectively measuring and balancing legal and business risks. Effective organizational skills in order to prioritize and manage multiple time-sensitive projects simultaneously. Strong, hands-on work ethic with willingness to assume heavy workload to meet timing and project needs. Excellent written and oral communication skills, with ability to synthesize complex legal issues to essential elements for clients throughout the organization with different abilities and responsibilities. Strong interpersonal skills, including optimism, diplomacy and flexibility, and the ability to interface effectively with personnel at many different levels throughout the Company. Ability to delegate and supervise. Willingness to travel and to spend time at the USPTO to assist examiners to understand our business and advance patent prosecution matters.
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