Intellectual Property Attorney Counsel Jobs in Massachusetts - 161120 | Submit Resume | General Counsel Consulting
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Contracts Manager
Holliston Massachusetts United States

4 Decades. 5 Regions. 1 Team: Build Your Future with the Best and Brightest in the Construction industry. Wayne J. Griffin Electric, Inc. is a leading electrical contractor headquartered in Holliston, MA working throughout New England and the Sout...

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Intellectual Property Attorney
Refer job# ZSHR161120
Intellectual Property Attorney/Agent Duties: Prosecute US and foreign applications related to complex algorithms and bioinformatic data. Identify patentable inventions through frequent interactions with the R&D team. Conduct patentability and freedom-to-operate analyses, and render opinions on validity, non-infringement and patent avoidance of third-party patents. Review technical and scientific manuscripts, posters, and other materials intended for publication for potential impact on the patent portfolio. Educate and advise the business on IP issues and good practices. Counsel internal partners on IP-related aspects of business and transactions. Support patent litigations and post issuance proceedings such as post grant proceedings and oppositions. Travel for work on intellectual property matters up to 10% as needed. Facilitate the drafting of new patent applications and responses to office actions. Assist in licensing negotiations as they arise. Identify legal issues as they arise and escalate as needed. Other duties pertinent to IP matters as assigned.

Qualifications: Registered US Patent Attorney/Agent in good standing with the U.S. Patent and Trademark Office. 3+ years of experience in patent prosecution. Experience in: Prosecuting active and complex patent portfolios around complex algorithmic software. handling post grant proceedings and oppositions. identifying severity and areas for issues and escalating at applicable times. History of collaborative, solution-oriented teamwork. Knowledge of domestic and international laws, regulations, and processes for patents and trade-secrets. Strong oral and written communication skills with demonstrated ability to simplify complex legal and scientific concepts for audiences with varying levels of fluency in those areas. Exceptional skills in the areas of organization, planning, and attention to details. Agreement to maintain confidentiality as it pertains to proprietary and/or sensitive information. Understanding of HIPAA and importance of patient data privacy. Preferred Qualifications: BS or higher in computer engineering, computer science, bioinformatics, or mechanical/electrical engineering with software experience. 3+ years of experience independently preparing and prosecuting patent applications.

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