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Years of Experience
Date Last Verified
Counsel IV - Patents The candidate will engage business partners to identify and examine potential intellectual property opportunities and encourage the creation and protection of intellectual property. Will develop, coordinate and review patent research and analysis projects, including prior art searches, patentability analyses, portfolio analyses, infringement/non-infringement analyses, validity/invalidity analyses and freedom to operate analyses. Manage the drafting, filing, prosecuting and maintaining a patent portfolio. Review and advise on agreements involving technology and intellectual property matters. Educate company employees on IP and the patent process. Set and implement patent policies. Direct and manage work with outside counsel related to intellectual property matters.
Qualification and Experience
The candidate should have a Bachelor's degree in a technical field (advanced degree preferred) preferably in engineering or a computer-related discipline. Should be registered to practice before the USPTO. Must have 10+ years of experience as a practicing attorney and active State Bar membership. Should preferably have 10+ years of experience including patent preparation and prosecution, freedom to operate, portfolio management, and patent licensing with 3+ years of experience in a corporate legal department. Extensive knowledge and understanding of research, counsel, and guidance on complex legal questions or inquiries is desired. Ability to be responsible for intellectual property related activities for a line of business, including training the business on patent filing and strategy, idea harvesting, management of patent application preparation and prosecution, product clearance opinions and other third party patent issues, and assisting in patent acquisitions and licensing is desired. Ability to provide intellectual property due diligence and transactional support is an asset. Ability to counsel other lawyers on intellectual property issues that affect the company is a plus. Should preferably have personally prepared and prosecuted 50+ patent applications. Significant experience in intellectual property risk management is desired. Experience within the financial services industry is an asset.
Application Deadline: April 22, 2018.
Job ID: 5400859
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