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Years of Experience
Date Last Verified
ProfilePatent Attorney The candidate will be helping to build and manage the company's global intellectual property portfolios through drafting, filing and strategic procurement. Will provides clear, informed and sophisticated counseling to stakeholders engaged in research & development, manufacturing, business development/partnering, portfolio and lifecycle management and commercialization activities. Renders legal opinions with respect to patentability, validity, and freedom to operate. Supervises a substantial patent portfolio, Manages patent portfolios in strategic alignment with business needs and priorities, including preparation, prosecution, maintenance and/or defense of US and foreign patent filings and patent office administrative actions (e.g. inter partes reviews, interferences, reexaminations, post grant reviews, and oppositions). Applies knowledge of patent trends and case law developments to devise patent strategies and advice. Conducts due diligence assessments and counseling based on these assessments, including freedom-to-operate, infringement and validity analyses, and risk evaluation and mitigation. Manages external relationships with outside counsel and collaborators, including substantial interactions within a multicultural global patent function. Supports intellectual property-related transactional projects (including MTAs, CDAs, research collaborations, and licensing agreements) and litigation activities. Accountable for delivering on-time, on-target and within-budget team goals and results. and Serves as a trusted advisor and partner to the business in navigating an evolving business and legal landscape. Responsible for Products falling into a specific technology category for Molecular Solutions. Strategic Patent Expert. Must be able to draft patent applications in the fields of bioinformatics/computer-implemented solutions and mechanical and electrical engineering. Subject matter flexibility. Technical knowledge across two or more software/hardware technology areas including semiconductor devices, processes, and circuits. microfluidics. device fabrication. and signal/image processing. Willingness to engage with other patent attorneys in biological/chemical technology areas including nucleic acid sequencing reagents and analysis of DNA sequencing data. Influential Communicator and Collaborative Relationship Builder.
Qualification and Experience
The candidate must have 7+ years of experience in patent prosecution and counseling in a corporate setting and/or law firm. Experience in patenting in vitro diagnostic devices preferred. Must have Admission to practice before the U.S. Patent and Trademark Office. A Bachelor’s degree in Computer Science, Electrical Engineering, Mechanical Engineering, Biomedical Engineering, or similar fields is required. Advanced Degree preferred. Law degree (JD) is required. Licensed to practice law in one or more of the 50 states or the District of Columbia is required. Agreement and transactional experience is desired.
F. Hoffmann-La Roche Ltd
4300 Hacienda Drive
Pleasanton, CA 94588