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

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YOUR WINDOW TO A WORLD OF OPPORTUNITIES

Intellectual Property Counsel II

Refer job# MMOC147376

Intellectual Property Counsel II The candidate will be preparing and prosecuting U.S. and foreign patent applications relating to medical devices in Diabetes field with emphasis on software aspects (for example, algorithms, user-interfaces, data analytic, artificial intelligence and similar technologies), including self-performed work, managing and reviewing outside counsel and diligently managing a docket using the corporate docketing systems; Executing on all aspects of creation and management of intellectual property, including developing and implementing offensive IP strategies, administration and evaluation of invention disclosures, conducting patent searches, performing freedom-to-practice evaluations and preparing or obtaining appropriate opinions, proactively becoming cognizant of competitor products and related IP watches, conducting infringement investigations and initial invalidity analyses, and providing timely counsel on intellectual property issues; Performing IP due diligence for mergers/acquisitions; Providing support and management on patent litigation, including early pre-suit assessments; Assisting in the drafting and negotiation of agreements involving the transfer or licensing of intellectual property; Interfacing with the R&D and business development groups, including proactive development and implementation of IP strategies, invention disclosure reviews, search reports and client counseling, and participation on product development teams to stay aligned with business objectives; Will be part of a collegial legal team and will be expected to work collaboratively with other in-house counterparts on agreement and transactional projects, client education, and development of standard practices to accomplish the objectives of the Diabetes Group legal department. The candidate should have a Juris Doctor Degree. Should have 5+ years of experience in patent and intellectual property law disciplines. Licensed to practice in at least one state or the District of Columbia with the ability to be admitted in California as RIHC is essential. Should be registered to practice before the U.S. Patent and Trademark Office. Bachelor's Degree in Computer Engineering, Computer Science, or Electrical Engineering with coursework in computer software, or similar scientific disciplines will be considered. Patent preparation and prosecution skills with strong experience in the preparation and prosecution of computer software related inventions working either In-house at a company or in a law firm are a plus. Broad IP experience is preferred including, in addition to US patent preparation and prosecution, experience with global patent issues and practices, litigation, transactions and transactional due diligence. Direct experience in engineering or computer science disciplines is preferred.

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