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Years of Experience
Date Last Verified
Intellectual Property Attorney: Mechanical/Electrical/Chemistry/Biology Duties: Work on and protect some of the most exciting IP at SRI, and more particularly, those in robotics, sensors, marine sciences, radar and space technology and innovations involving drug development, medical devices, diagnosis, and platforms. Expertise in patent prosecution and/or patent portfolio management in the mechanical and electrical arts, in the chemical and biological arts, or both. In-house experience is a bonus. Collaborate with SRI management, business development staff, and technical teams to identify the most strategic areas for IP protection and portfolio growth. Stimulate the generation of valuable invention disclosures through education and effective communication. Supervise and provide substantive guidance to teams of outside patent professionals that will work with SRI to prepare and prosecute robust patent applications based on SRI’s invention disclosures and technical papers. Define and implement practices to ensure that all SRI IP protection efforts – particularly patent applications and office action responses—are optimally aligned with technical, business, and intellectual property priorities. Provide timely counsel on a variety of IP issues, including patent, copyright, trademark, and open source issues. Review and approve a high-volume of time-sensitive public release requests in the context of identifying the various, potentially competing business and IP rights preservation interests. Provide IP transaction support by working with SRI deal teams (including SRI licensing attorneys) in defining IP licensing strategies and in drafting, negotiating, and reviewing IP aspects of agreements.
Qualification and Experience
Qualifications: Member of the California state Bar, or eligible for admission as registered in-house counsel. 3-10 years of experience in the fields of mechanical and electrical arts or in the chemical and biological arts, or both. Experience drafting and prosecuting patents at a law firm. Prior in-house experience a bonus. Patent Attorney registered with the USPTO. Technical degree and/or experience in the mechanical and electrical arts, chemical or biological arts or both. U.S. Permanent Residency required. Excellent patent analysis abilities, including a deep and detailed understanding of patentability, validity, and claim construction considerations. Excellent interpersonal skills including the ability to foster trust and respect and to create friendly and collaborative internal working relationships with internal clients. Superb organizational skills and attention to detail, including the ability to prioritize and multi-task effectively. Excellent written and oral communication skills, including presentations to senior business, technology, and legal personnel. Openness and willingness to learn.
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