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Intellectual Property Counsel
Refer job# DGMH158761
 
Intellectual Property Counsel The candidate performs and coordinating various activities related to intellectual property rights, in particular patent and design rights (PDRs). Prosecutes of patent and design rights to strengthen the company's PDR portfolio within the framework of the PDR Creation process, including preparing of patent applications, filing of patent applications with patent offices, communicating with patent offices during examination proceedings including interviewing examiners at the USPTO, entering of national and regional phases, defending of own PDRs in patent litigation proceedings; provides advice to inventors and the business management, directs/manages in-house paralegal, in-house patent engineer, and outside counsel to obtain patent protection for the company's inventions within budget constraints. Prepares prior art searches in patent databases maintain the patent portfolio. Manages the PDR Clearance process to verify the Freedom-To-Operate of the Company's products and services in close collaboration with product managers, project leaders, and technical patent experts. Provides legal advice to the decision-maker and manages patent challenging processes, like opposition or IPR proceedings, as well as licensing negotiations. Renders opinions or recommends obtaining outside counsel opinions, drafts and/or reviews patent assignments, patent licenses and other agreements, or intellectual property portions thereof. Conducts and requests clearance searches. Reviews and rates the relevance of patent publications. Supports patent litigation proceedings. Prepares and prosecutes global patent applications relating to all aspects of the technical platform. Managing outside counsel on various projects as appropriate. Administrates and manages the PDR Screening process in close collaboration with product managers, project leaders, and technical patent experts. Prepares and updates patent database searches to classify patent publications and assigns technical patent experts to the corresponding classifications. Supporting and counseling inventors during the preparation of invention reports. Provides education and training for employees, technical patent experts, and users of the PDR Clearance, PDR Creation, and PDR Screening processes. Coordinating, moderating, and documenting Invention Review Board Meetings. Ensures that appropriate and effective operational procedures are in place for handling PDR matters, in particular for PDR Screening, PDR Clearance, and PDR Creation. Handles trade secrets and nondisclosure agreements, along with other inside or outside counsel. Monitoring and analyzing of PDR activities of competitors occasionally, mainly for professional training.

The candidate must have a University degree in a technical discipline and electro-engineering or physics with licensed to practice law (in California) and excellent academic credentials and professional references. Must have 3-6 years of patent prosecution and/or IP litigation experience with the international patent practice. Experience in patent drafting and prosecution is required. Must be familiar with EP and US patent practice. Knowledge and experiences regarding office software, patent docketing systems, patent databases, and searches in online patent registers are needed. The ability to effectively communicate with senior leadership, middle management, technical subject matter experts, and other attorneys is essential. Should be able to instruct in-house paralegal, in-house patent engineers, technical patent experts as well as outside attorneys.
 
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