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Years of Experience
Date Last Verified
Intellectual Property Counsel The candidate works as an in-house counsel in the preparation and prosecution of patent applications with the United States Patent and Trademark Office (USPTO) and related international agencies; collaborates with Research and Development (R&D) to review, interpret, and analyze technical data for inclusion in the patent application. Supervises, supports and challenges outside patent counsel and/or trademark counsel; reviews and presents information and documents for filing and prosecution; monitors deadlines and ensures timely responses to actions. Prepares draft responses to Office Actions; collaborates with R&D to obtain and analyze information for response to Office Actions; performs legal research and prior art searches as needed to support response; routes draft response for additional input from the Director IP and/or other members of the Intellectual Property team, from business and/or R&D as deemed appropriate; finalizes and submits response or has the response submitted through outside counsel. Collaborates with corporate legal counsel and business/R&D in the review and negotiation of various contracts which have arrangements relating to IP. Reviews public disclosure statements, press releases, sales literature, information to be provided to customers and/or regulatory authorities to ensure proper capturing of intellectual property and mitigating risks in relation to third party IP rights. Provides and/or supervises patent counsel in rendering opinions on validity and infringement. Drafts opinions and contributes in developing IP strategies for the company's business and research endeavors, develops and actively manages the patent portfolio; performs patent searches/watches and researches and prepares due diligence analysis; contributes in drafting and ‘enforcing’ policies and procedures. Oversee copyright, trademark, patent litigation matters. Interacts extensively with various disciplines throughout the organization such as business leadership team, sales, marketing, R&D, Regulatory, Legal, Operations and acts as Business Partner. Maintains and applies current knowledge of United States and International patent and trademark application processes and computerized information management systems. Maintain and/or builds up knowledge on patent and trademark laws of US, Canada, Mexico, and Brazil and other countries as deemed necessary.
Qualification and Experience
The candidate must have JD. Bachelor degree in genetic bio-engineering sciences is required. Doctorate or Masters of Science degree is strongly preferred. Should have 4+ years of experience, preferably a combination of in-house and corporate settings. Admission to the California State Bar or registered in-house counsel is needed. Registration to practice before the United States Patent and Trademark Office (USPTO) is essential. Excellent communication skills, both written and oral, to effectively communicate complex issues internally and externally is needed. Proficiency with Microsoft Office is essential.
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