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In-House
Attorney
Intellectual Property - Patent General
Min 6 yrs required
Senior Patent Counsel The candidate will manage prosecution of pending patent applications; prepare and prosecute patent applications for new inventions. Work with engineers on the R&D team to capture invention disclosures. Review third party patents for impact on existing and new products as well as relevance to patent applications. Conduct intellectual property due diligence prior to potential acquisitions and contractual relationships. Manage outside counsel and maintain strong working relationship with USPTO. Oversee protection of trademarks and copyrights. Review and revise intellectual property protection and disclosure practices. Assist in resolution of intellectual property disputes and litigation. Negotiate and document intellectual property licensing arrangements. Provide pragmatic, business-oriented advice on the retention or acquisition of intellectual property rights. Communicative effectively, both in writing and verbally, with other departments and senior management to convey intellectual property strategy.
Qualification and Experience
The candidate should have J.D. and membership the California Bar or at least one other state’s bar and the ability to obtain registered in-house counsel status. Should have admission to practice before USPTO. Should have 6+ years of relevant legal experience. Undergraduate degree in mechanical or biomedical engineering preferred. Experience with medical devices strongly preferred, ideally with those used in vascular and endovascular procedures. Software engineering or computer science background a plus.
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