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Senior Counsel - Intellectual Property
Refer job# WXXG140817
 
Senior Counsel - Intellectual Property The candidate will be responsible for managing IP work including patent preparation/prosecution, freedom to operate analysis and diligence. Maintain strong interactions with R&D and project teams, to identify patentable inventions and create and execute patenting strategies. Engage with MMS management to provide strategic counseling, updates and recommendations related to the MMS IP portfolio and offensive/defensive patent activities. Provide direction to outside counsel on patent filing and prosecution matters globally. Provide landscape analyses and related support for R&D programs. Provide patentability, FTO and related opinions in support of R&D programs and business development activities. Monitor third party patent activity in areas of interest. Assist in offensive and defensive patent challenges in global patent offices. Assist commercial attorneys with IP elements of agreements. Assist in management of IP litigation involving MMS. Educate and advise MMS associates on intellectual property issues.

The candidate must have Bachelor or higher in engineering or science, preferably in Computer Science, Computer Engineering, Mechanical Engineering, Electrical Engineering, or Systems Engineering. Should have Juris Doctor degree from an ABA accredited law school and admitted to practice before the U.S. Patent and Trademark Office. Member of the California Bar (or ability to become RIHC) is needed. Should have 6-9 years of law firm and/or in-house experience. Experience with and demonstrated competency in the computer or electromechanical arts and technology systems (e.g. systems including software) is required. Experience with US and European post-grant patent office proceedings is needed. Experience with global patent filing strategies is must. Experience with data and data analytics is desired. Strong oral and written communication skills is required.
 
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