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General Counsel
Consulting
provided
exceptional
service in helping
my organization
recruit for a hard
to fill position.
They did extensive
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 Attorney-intellectual Property Job in New York > Senior Attorney-intellectual Property

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YOUR WINDOW TO A WORLD OF OPPORTUNITIES

Senior Attorney-intellectual Property

Refer job# FBHV164522

Senior Attorney-Intellectual Property Duties: Develop and implement long term intellectual property strategies including portfolio assessment, perform technology/product landscape analysis, gap analysis and strategic IP portfolio growth plans. Work with R&D, business partners and product development teams to assist with all aspects of patent and trademark preparation and prosecution, including leading idea generation/brainstorming sessions, managing and prioritizing invention disclosures, and leveraging an existing IP portfolio (i.e., mine) to maximize value of an existing IP portfolio. Work with internal business partners and resources to support technology licensing agreements, acquisitions and other alliances involving intellectual property. Work with Director, IP to manage outside counsel, and other IP vendors. Tasks include reviewing outside counsel work product, managing docket related deadlines, and assisting in patent maintenance decisions. Work with business development to identify, evaluate, and develop mitigation strategies for IP risks related to potential acquisitions or other deals with a solution-focused approach. Assist with the management of intellectual property licensing relationships with third parties, such as technology transfer offices. Support management of IP risk to the business, including monitoring competitive patent landscapes and pending applications, prepare and oversee new product clearances and freedom to operation positions. Conduct due diligence activities by researching and preparing competitive company summaries, including IP portfolio analyses, implementing strategic patent search strategies for patentability searches, invalidity positions, and competitive landscape analysis. Provide recommendations regarding IP risk mitigation on proposed new product designs or product line extensions and improvements. Support potential and pending patent and trademark litigation, including USPTO post grant proceedings and patent infringement litigation. Assist in managing and supporting trademark portfolio. Support the management of costs associated with IP portfolio and implement cost improvement processes. Provide all work products including draft applications, office action responses, and product clearances to Director, Intellectual Property prior to submission or filing. Provide training guidance and review the work product of others as requested. Mentors other team members and demonstrates leadership by fostering an environment of teamwork, cooperation, and collaboration. May perform other duties as assigned. Qualifications: 8+ years of demonstrated experience that must include prior law firm experience. Must also have experience in patent prosecution, licensing relationships, clearances, litigation support, due diligence and competitive intelligence. JD Degree required from an accredited law school with strong academic credentials. Admitted and in good standing with at least one U.S. State Bar. Must be registered to practice before the U.S. Patent and Trademark Office. Medical device experience preferred. Bachelor or an advanced degree in an Engineering background a plus. Experience in the following computer software applications: MicrosoftOffice. ability to work with a multi-disciplinary team of managers, engineers, and other staff to translate engineering ideas into patent applications. Demonstrated ability to multi-task and meet deadlines. Self-starter and ability to work independently. Excellent written and verbal communication skills and ability to work well with others. Ability to manage others including training, guidance and constructive feedback. Ability to travel globally. Exceptional interpersonal skills. Strong organizational skills. Strong communication skills (written and verbal). Ability to effectively communicate both internally and externally. Ability to read and interpret documents such as safety rules, operating and maintenance, instructions, and procedure manuals. Ability to write routine reports and correspondence.

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