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Patent Attorney The candidate will be responsible for the growth of the company's patent portfolio in the US and foreign jurisdictions. Will be a key interface with engineers in the identification, collection, and review of ideas for patentability and assist in IP diligence and freedom to operate studies. Responsible for the strategic management of worldwide patent portfolio based on business needs and aligned with current enforcement activities. Work closely with engineering and business clients to identify and harvest invention disclosures and draft patent applications. Manage outside counsel in the preparation of high-quality patent applications. Manage outside counsel in strategic prosecution of patent claims crafted on specific product features. Independently manage prosecution docket and Foundation IP including management of patent annuities worldwide. Analyze products through reverse engineering efforts to investigate instances of possible patent infringement and prepare infringement analysis of products. Identify and prepare business cases for possible enforcement actions against infringers. Assist in carrying out IP diligence and freedom to operate studies. Work closely with our patent paralegal in patent docketing and other tasks related to managing deadlines. Depending on interest and need, assist with litigation, enforcement, licensing or post-grant proceedings at the USPTO (inter partes review, ex parte reexamination).
Qualification and Experience
The candidate should have an undergraduate degree in Electrical Engineering, Mechanical Engineering, Computer Engineering, Computer Science, Physics or comparable degree. Should also have a J.D. degree from an accredited law school. Must have 3+ years of experience in a law firm or in-house legal department prosecuting patents and performing freedom to operate or invalidity analyses. Strong knowledge of US and foreign patent law is needed. Should be registered to practice before the USPTO.
Requisition ID: 3558
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