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Melinda Burrows
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Energy Service Company
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Corporate Counsel, Patents
Refer job# ZYVC151789
 
Corporate Counsel, Patents Duties: Coordinates with outside counsel on preparation and prosecution of patent applications related to the company's biologics portfolio (both in-licensed and through internal research activities) and works with scientists to obtain necessary information and data. Conducts freedom to operate and patentability searches using patent and scientific literature and databases. Assists patent counsel in preparation of freedom to operate and patentability opinions. Coordinates with outside counsel in the preparation, filing, and prosecution of patent applications to obtain broadest possible protection for company's inventions. May handle appeal and opposition proceedings. May assist in negotiation and drafting of material transfer agreements, research agreements, patent licenses and other agreements. Ensures all commercially important inventions are protected by valid patents and do not infringe valid third-party patents. Conducts and evaluates state-of-the-art searches. Assists in training scientists in electronic notebook maintenance and invention disclosure procedures. Attend internal scientific meetings and meet with scientists for periodic updates when necessary. May help paralegal staff to maintain the company's database of publications, patents and patent applications. Complies with company health and safety policies and procedures.

Qualifications: JD Degree, MS/MA degree in molecular biology, immunology or related discipline and five to seven years of related experience; or, JD, PhD degree in molecular biology, immunology or related discipline and three to five years of related experience; or Equivalent combination of education and experience. Advanced degree in molecular biology, immunology or related discipline required. Admission to practice before the US Patent and Trademark Office. Typically requires 8+ years of related experience and/or combination of experience and education/training. Experience in Biotech/Pharmaceutical industry or in a law firm prosecuting patents is required. Has extensive experience in relevant industry/profession and area of specialization. Uses professional concepts and company objectives to resolve complex issues in creative and effective ways. Identifies and implements methods and procedures to achieve results. Leads or manages the work of others by providing guidance to subordinates or teams based on organizational goals and company policy, with responsibility for results, including costs, methods and staffing. Performs a variety of complicated tasks with a wide degree of creativity and latitude. Has complete understanding and wide application of technical principles, theories, concepts and techniques. Has good general knowledge of other related disciplines. Applies strong analytical and business communication skills.
 
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