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Energy Service Company
LLC

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Counsel Jobs > Senior Counsel, Intellectual Property Job in California > Senior Counsel, Intellectual Property

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YOUR WINDOW TO A WORLD OF OPPORTUNITIES

Senior Counsel, Intellectual Property

Refer job# VZCO169580

Senior Counsel, Intellectual Property RESPONSIBILITIES: In close collaboration with other IP team members, strategically develop our worldwide patent portfolio, including directing and managing domestic and foreign outside counsel to prepare and prosecute patent applications in a diverse and growing technological field. Participate in the effective management of our external budget, including monthly, quarterly and annual budget reviews, quarterly forecasting, and reviewing outside counsel invoices. Manage invention disclosures, including collecting and screening disclosures, conducting inventor interviews, and presenting disclosures at patent committee and Invention Review Board meetings. Conduct due diligence on potential mergers and acquisitions and freedom-to-operate assessments that drive strategic acquisitions and product development. Conduct in-depth analyses of competitor products and IP portfolios. Eeview outside counsel work to ensure the work, methodology, strategy and costs meet's expectations. Collaborate with cross-functional teams and counsel a variety of clients on IP and other legal issues. Interact with and provide legal and strategic guidance to senior management, engineers and other functional organizational leadership. Collaborate with commercial legal counsel, including preparing and reviewing research and development agreements, confidentiality agreements, license agreements, and consulting agreements and counseling the business regarding IP transactional matters. Assist internal and external litigation counsel on IP litigation matters. May supervise exempt or non-exempt employees, and manage employee career counseling, performance evaluation and other issues if required. Conduct employee training sessions on the protection of innovations through the patent process, best practices for maintaining confidential business information, contractor and vendor matters, and the overall development of intellectual property assets. Provide counseling and strategy options on marketing and promotional materials. Occasional domestic or foreign travel. QUALIFICATIONS: Juris Doctor from accredited law school and admitted to a US state bar in good standing. USPTO registration is in good standing. Strong academic background. BS in engineering or physics. Should have 7 years working as a patent attorney and counseling clients on intellectual property issues. Must have experience prosecuting mechanical, electro-mechanical, and software patent applications as well as conducting agreement reviews and negotiations. Experience handling PTAB/EPO Opposition and supporting patent litigation a plus. Significant freedom-to-operate or product clearance experience, preferably for medical device products. Excellent oral and written communication skills, interpersonal, facilitation, presentation, quantitative, analytical, organizational, and follow-up skills. Strong interpersonal skills and strategic thinking. Ability to understand and comply with applicable FDA regulations and Company operating procedures, processes, policies, and tasks. PREFERRED QUALIFICATIONS: 5 years of drafting and prosecuting patent applications in the area of medical devices and/or software and/or managing a medical device IP portfolio. Possess significant in-house IP experience, preferably in the medical device industry. Government (USPTO or EPO) experience a plus. Working knowledge of patent laws in major jurisdictions outside of the US.

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