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Energy Service Company
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Counsel Jobs > Intellectual Property Counsel Job in California > Intellectual Property Counsel

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YOUR WINDOW TO A WORLD OF OPPORTUNITIES

Intellectual Property Counsel

Refer job# CIDE142566

Intellectual Property Counsel The candidate will share responsibility for the full scope of global IP issues (patent, trademark, copyright and trade secret), including internal client counseling; patent preparation and prosecution; rendering legal advice on patentability, validity, and freedom to operate; due diligence reviews; and intellectual property-related transactional work. Additional responsibilities include working closely with Research and Development to monitor the progress of firm's in-house research and identifying and addressing IP aspects of regulatory matters. Work independently, and to demonstrate initiative, sound judgment, and a service-oriented focus. Aggressively identify opportunities to expand firm's IP estate. Draft and prosecute patent applications (US and foreign patent offices). Develop and maintain a detailed understanding of ongoing development projects. Conduct patentability and freedom-to-operate reviews, including validity. Counsel research and management colleagues with respect to firm's patent portfolio and IP strategies. Review IP aspects of nondisclosure, research, license, collaboration and other agreements involving the use, transfer, or ownership of intellectual property. Review proposed publications with a focus on potential invention disclosures. Provide IP support for firm's Business Development and Alliance Management functions. Other duties as assigned. The candidate must be able to independently and proactively identify IP and legal issues potentially impacting firm's business objectives. The ability to counsel research colleagues, business colleagues and senior management by providing clear and timely advice is essential. Registered to practice before the USPTO is required. Should have J.D. degree from an ABA accredited law school, and admission before a State bar or as in-house counsel. Advanced degree in Immunology, Cell Biology, Biochemistry or related sciences; a PhD is preferred. Should have 5+ years of in-house and/or law firm experience, ideally a mix of both. Experience in foreign adversarial proceedings (patent litigation, oppositions, nullity actions, etc.) is desirable. Experience in the pharmaceutical or biopharmaceutical industry, particularly in the field of cell therapy, is strongly preferred. Should have the ability to develop, manage and grow the IP aspects of international collaborations. A working understanding of cell therapy, immunology, molecular biology, cell biology, microbiology, biochemistry, genetics, structural biology, and/or biopharmaceutical process development and manufacturing will be a key asset. Must have a strong client service focus, the ability to work independently and in teams, to work efficiently, to prioritize workflow, and to meet demanding deadlines in a fast-paced, start-up environment. Should have strong interpersonal skills including verbal and written communication are essential in this collaborative work environment. Must be authorized to work in the U.S.

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