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Years of Experience
Director and Associate General Counsel, Patents The candidate will lead a growing team responsible for the development and management of firm worldwide patent portfolio. Understand firm's strategic and competitive position and execute on the company's portfolio strategy. Oversee all aspects of patent application preparation and prosecution by outside patent counsel. Ensure strongest patent protection for firm inventions and maximize freedom to operate. Keep current on patent laws, policies, practices and procedures in the U.S and abroad. Analyze proposed legislation and policy, and work with the company's policy team to engage with government and judicial officials. Educate engineers and other company personnel generally on patent issues and provide guidance on the patentability of inventions.
Qualification and Experience
The candidate must have JD degree and State Bar membership. Should have 12+ years' experience as a patent attorney in a law firm or in-house. Undergraduate degree in computer science, electrical engineering, physics or substantially similar technical field is preferred. Eligible to practice before the U.S. Patent and Trademark Office is required. Experience in patent preparation, prosecution and portfolio management with a focus on software, mobile, web technologies, social products/technologies/platforms, and technologies is needed. Communication experience and experience thinking strategically is must. Experience interfacing with senior executives, clients and co-workers is essential. Experience meeting deadlines, prioritizing workflow and adjusting to workload fluctuations is required. Experience with patent licensing, valuation and acquisition is needed.
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