Counsel, Intellectual Property Counsel Jobs in Massachusetts - 136502 | Submit Resume | General Counsel Consulting
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Melinda Burrows
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Counsel, Intellectual Property
Refer job# FEAW136502
 
Counsel, Intellectual Property Duties: Working closely with the VP, Legal Affairs to development and implement an IP strategy for Finch and its products/programs Facilitating patent preparation and prosecution work with outside counsel to file patent applications and expand an already strong patent portfolio. Working closely with Finch scientists to identify and harvest innovation and draft patent applications with support from outside counsel. Taking an active role in drafting patent claims, responses to office actions, and other documents to support U.S. and foreign prosecution efforts. Interacting with third party collaborators of Finch. Conducting patentability and freedom-to-operate searches and analyses. Conducting due diligence analyses and competitive intelligence gathering. Supporting corporate strategic IP initiatives. Conducting training of Finch employees on IP and best practices. Managing trademark filings.

Qualifications: JD Degree and admitted to practice in Massachusetts. Registered to practice before the U.S. Patent and Trademark Office. 3-5 years' in-house and/or law firm experience. Advanced degree in biological sciences with a Ph.D. in biological sciences preferred. Experience in patent preparation and prosecution, IP due diligence, patentability and freedom-to-operate assessment required. Preferred Extensive knowledge of patent prosecution procedure, including international and foreign patent prosecution procedure, patent statutes and treaties. Exceptional communication skills, including, writing and presentation skills. Well-developed research, problem-solving and critical thinking abilities. Clear potential to establish professional dependability with executive level management by conveying clear, succinct and correct advice, including straightforward guidance as to potential risks and benefits of IP-related activities. Ability to independently handle legal matters, assist and guide outside legal counsel and work collaboratively with both scientific and corporate workforces. Ability to set and meet ambitious deadlines, handle numerous multifaceted legal issues and see projects through conclusion and beyond.
 
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