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Intellectual Property Counsel III
Refer job# ZXIU146370
 
Intellectual Property Counsel III Duties: Direct and guide the IP deliverables for all stages of product development. Support the development and implementation of IP strategies for the assigned divisions. Oversee the preparation and prosecution of a global IP portfolio, including the management of U.S. and foreign IP counsel. Manage the overall product release clearance/freedom to operation as it pertains to patents and intellectual property, including preparing clearance/freedom to operate opinions. Prepare intellectual property due diligence analyses for acquisition and divestiture matters as assigned. Train and educate business personnel on invention disclosure processes, patent processes and IP asset management. Demonstrated ability to communicate to diverse audiences. Demonstrated ability to collaborate in highly matrixed teams of IP and legal professionals. Collaborate with corporate IP litigation team in all aspects of patent litigation as well as adverse proceedings before patent offices. Provide legal counsel and guidance regarding trademark selection and clearance. Negotiate and draft IP related agreements.

Requirements: JD Degree. Bachelor's Degree in Biomedical Engineering, Mechanical, Chemical, Electrical, Electro-Mechanical, Mechanical or similar scientific discipline. 8+ years of experience in patent and intellectual property law disciplines. Registration to practice before the US Patent and Trademark Office. Current member of a state bar or DC bar. Nice to Have. Master of Science Degree in Electrical, Electro-Mechanical, Mechanical, Computer or Biomedical Engineering, Chemical, Physics or similar scientific discipline. Aptitude or experience in various intellectual property legal issues, including, licensing, trade secret, copyright, trademark and open source software. Analytical thinking and ability to work on multiple projects at the same time. Medical device experience. Litigation experience. Excellent priority-setting skills, and people skills to deal with direct client contact and management. Proficiency in engineering, strong creative abilities and scientific principles. Possess a strong commitment to company values.
 
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