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Energy Service Company

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Intellectual Property Attorney
Refer job# XCYA164941
Intellectual Property Attorney The candidate will be preparing patent applications for a variety of the company's products while working closely with inventors. Conducting patentability, freedom-to-operate, and landscape searches. Advising the company in the development and implementation of intellectual property protection strategies to support the needs of individual business units. Overseeing and participating in the prosecution of U.S. and foreign patent applications. Advising the company on the freedom to operate in view of 3rd-party IP rights. Conducting competitive IP due diligence. Effectively managing outside counsel to achieve positive outcomes. Drafting and negotiating technical agreements, including licenses, joint development agreements, technology agreements, and non-disclosure agreements. Collaborating closely with other legal department colleagues and functional support groups to provide legal advice and counsel.

The candidate should have a BS (Electrical engineering degree preferred). A JD degree (preferred but strong patent agent candidates will be considered). Should have 1-3 years of prior art searching, and patent preparation and prosecution experience in a law firm and/or corporate setting. USPTO registration or eligibility, therefore. Proven analytical skills and understanding of engineering, power systems, signal processing, and computer science principles. Excellent communication skills, both written and verbal. Excellent project management skills. Excellent organizational, analytical, and interpersonal skills. Detail-oriented and able to work independently and multi-task in a fast-paced environment. Familiar with the procedures set forth in the MPEP (Manual of Patent Examining Procedures) regarding the prosecution of patents. Proficiency in reviewing and analyzing patents with the ability to summarize the scope of the patents and communicate such scope (both orally and in written form) to a variety of stakeholders.

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