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General Counsel
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provided
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immediately.

Melinda Burrows
Deputy General Counsel
- Litigation and
Compliance, Progress
Energy Service Company
LLC

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Counsel Jobs > Director Of Intellectual Property (attorney) Job in Arizona > Director Of Intellectual Property (attorney)

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Director Of Intellectual Property (attorney)

Refer job# UELF137357

Director of Intellectual Property (Attorney) The candidate will prosecute all forms of intellectual property and support general counsel in the management of the IP group within the legal department. Will prepare and file both trademark and patent applications, and lead a group of intellectual property professionals in managing various disclosure, filing, and prosecution processes. Will also work closely with our engineering teams to identify, collect, and review ideas for patentability. Prepare patent applications for US, PCT, and other foreign filings, focusing particularly on inventions related to conducted electrical weapons. Respond to office actions, including providing instructions to foreign associates. Procure and review new invention disclosures and assess for patentability, requesting external searches where appropriate. Manage the freedom-to-operate opinion process, including generating preliminary opinions, proving search instructions to outside patent search providers, and reviewing opinions from outside counsel. Track and prioritize filings and other appropriate actions, providing IP updates to various stakeholders including general counsel, and coordinating decision-making with management. The candidate should have a Bachelor's degree in Electrical Engineering and/or Computer Systems Engineering. Should be a member in good standing with at least one State Bar, and USPTO registration number. Must have 10+ years of patent prosecution experience and 5+ years of in-house IP management experience. Working understanding of electrical circuits, electronics, microprocessors, computers, and software is required. Proven analytical skills and understanding of engineering principles needed. Proven experience working as an engineer is an advantage. Ability to independently file matters with USPTO via EFS is desired.

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