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General Counsel
Consulting
provided
exceptional
service in helping
my organization
recruit for a hard
to fill position.
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work on the front
end to understand
our needs and
our culture and
began referring
highly qualified
candidates almost
immediately.

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

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Counsel Jobs > Senior Principal Intellectual Property Counsel, Diabetes Job in Virginia > Senior Principal Intellectual Property Counsel, Diabetes

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YOUR WINDOW TO A WORLD OF OPPORTUNITIES

Senior Principal Intellectual Property Counsel, Diabetes

Refer job# MILW151127

Senior Principal Intellectual Property Counsel, Diabetes Duites: Preparation and prosecution of a global IP portfolio relating to medical devices in the Diabetes field with emphasis on electronics and computer engineering technologies. Tasks include self-performed work, managing and reviewing outside counsel work, and diligently managing dockets using the corporate docketing systems. Executing on all aspects of creation and management of intellectual property, including developing and implementing IP strategies, administration and evaluation of invention disclosures, conducting freedom-to-operate diligence and preparing opinions for clients, proactively becoming cognizant of competitor products and related IP watches, conducting infringement investigations and invalidity analyses, and providing timely counsel to clients. Interfacing with the R&D and business development teams for proactive development and implementation of IP strategies that align with business strategy and objectives. Providing support and management on patent litigation, including early pre-suit assessments. Performing IP due diligence for mergers/acquisitions. Reviewing Medtronic patent assets and creating patent portfolio packages in support of monetization activities. Drafting and negotiation of IP agreements, such as, for example, patent licensing agreements, joint-development agreements, material transfer agreements. Requirements: Juris Doctor (J.D.) from a nationally accredited law school with strong academic credentials. Bachelor's Degree in Electrical Engineering, Electronics or Computer or Biomedical Engineering, or similar scientific disciplines . 8+ years of experience as an attorney in intellectual property law discipline . Licensed to practice in at least one state or the District of Columbia with the ability to be admitted in California as RIHC . Registered to practice before the U.S. Patent and Trademark Office. Should preferably have Both in-house and law firm experience. Should have Understanding of basic business concepts, strategies, and risks. Broad IP experience including good understanding of issues related to IP transactions and transactional due diligence. Patent Licensing and Monetization experience is a definite plus. Direct experience in engineering or science disciplines. International experience is a plus.

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