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Intellectual Property Counsel
Refer job# TJLP167521
 
Intellectual Property Counsel Duties: Work with business leaders to set and implement appropriate IP strategies to achieve business objectives. Manage the Company s patent portfolio and the U.S. and foreign prosecution docket. Identify inventions and draft, file, and prosecute key strategic patent applications. Support, communicate with, and advise research and development teams regarding the identification and development of IP. Perform patentability, validity and freedom-to-operate analyses and IP landscape evaluations. Review publications, presentations, and other disclosure requests for potential IP issues. Support the Company s business development and transactional activities, including conducting IP due diligence assessments, managing IP due diligence requests, and reviewing IP provisions in contracts. Providing legal support in conjunction with various product development agreements (including HCP agreements) and supplier agreements, and ensuring such agreements are compliant and aligned with business strategy. Manage external patent and trademark counsel, including work product, budgets, and invoices. Uses a range of tools and data sources to understand the internal and external IP environment.

Qualifications: JD/Law Degree from a Nationally Recognized University along with Active Registration, in good standing, with a State Bar and as a U.S. Patent Attorney. A BS degree, preferably in biomedical, mechanical, or electrical engineering. 8-10 years of experience at a law firm or in-house legal department of a multinational corporation. Experience of devising innovative IP strategies. Sound judgment in developing and implementing legal solutions. Ability to handle multiple priorities in a time pressured environment. Ability to develop process driven solutions to issues. Ability to work in a cross functional environment. Excellent written and oral communication skills. Good commercial awareness and financial acumen.
 
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