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Intellectual Property Attorney
Refer job# LGYD136557
Intellectual Property Attorney The candidate will be responsible for identifying and protecting the company s legal and intellectual property interests. Manage and perform direct work on many varied intellectual property and legal matters, including patent, trademark, trade secret, licensing, contract, and litigation matters. Interact daily with engineers, engineering management, clinical specialists, and company executives. Manage outside lawyers and supervise the work products to ensure that company legal and intellectual property rights are maximized. Counsel engineers and engineering managers regarding patent and trade secret matters. Actively seek out and identify patentable subject matter. Work with engineers and engineering managers to ensure that inventions are protected using the appropriate intellectual property protection scheme. Counsel company executives about how best to protect and exploit new company intellectual property. Evaluate benefit of patent or trade secret protection for various particular inventions. Evaluate benefit of applying for United States and foreign patents in various markets to protect particular inventions. Supervise preparation and prosecution of United States and foreign patent applications to ensure inventions are properly protected. Ensure patent applications are filed to meet legal department production goal deadlines by working with inventors and outside lawyers. Edit patent applications and responses to patent office actions authored by outside lawyers, both in the United States and in various foreign jurisdictions. Personally author patent applications and responses to patent office actions. Analyze various patents and patent portfolios owned by others. Personally conduct and/or supervise outside lawyers patent searches. Advise company executives and engineering managers on potential infringement, validity, and freedom to operate matters. Advise engineers and engineering managers on the impact of patent claims on proposed and current development work. Advise company executives about value of patents and patent portfolios for possible license or purchase. Advise company executives about enforcement of company legal and intellectual property rights. Conduct infringement analysis of competing products. Prepare and present infringement analysis results to company executives. Support intellectual property and business litigation matters. Draft commercial contracts to cover a variety of commercial needs. Joint research and technical collaboration agreements. Must have Juris Doctorate degree and membership in the CA State Bar. Should have 7+ years experience in patent application preparation and prosecution in the United States, under the Patent Cooperation Treaty, and working with non-U.S. counsels in various foreign jurisdictions. Registration with United States Patent and Trademark Office is required. Strong academic background in engineering (mechanical or electrical preferred); practical engineering experience is preferred. Patent experience in medical device industry, preferably with surgical products is needed. Strong contract drafting experience, including experience in general commercial matters, joint development agreements, and intellectual property matters is must.

Jobs From BCG Attorney Search

ID #IE9P63186

Silicon Valley office seeks patent attorneys having 1-2 years of patent prosecution experience. The candidates should have undergraduate degrees in either electrical engineering, computer science, or ...


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