Corporate Counsel II - Intellectual Property - Patent Litigation
The candidate will report to the Senior Counsel - Patent Litigation. Will assist with the global defense of company's patent portfolio. Assist with patent litigation in the US and foreign countries, provide support in global opposition, invalidate and revoke proceedings and handle a small docket of patent application preparation and prosecution. May occasionally be called upon to assist the department in managing work load by undertaking additional activities as needed to support the IP interests of the company. May also occasionally be engaged in activities designed to improve departmental processes and procedures as requested by the Senior Counsel - Patent Litigation and/or the VP Intellectual Property. Actively participate in litigation teams by assisting with overall litigation strategy, interviewing fact and expert witnesses, collaborating with outside counsel for the preparation of witnesses for deposition and attending same, collaborating with outside counsel in the selection and preparation of expert testimony. Assist in internal document collection and production. Assist in reviewing correspondence, arguments, memos, and briefs in support of litigation. Assist in providing instruction to local counsel in foreign litigation matters and coordination of consistent positions across various countries. Assist with the preparation of comprehensive patent portfolio summary documents and conducting patent portfolio reviews. Contribute to the development of strategy and arguments related to global opposition, invalidation and revocation proceedings. Assist in the evaluation of company's patent portfolio in advance of litigation and engage in the activities to maximize the strength of same. On occasion, conduct or assist in freedom-to-operate, validity and due diligence analysis and prepare opinions regarding same. Collaborate and assist other IP department professionals to secure patents for company inventions worldwide.
The candidate should have a Bachelor's degree in biology, chemistry, pharmacy or other related life sciences degree. Should have J.D. degree and admission to at least one State Bar. USPTO registration is required. Must have 5-8 years of relevant experience which will include a broad range of activities including patent drafting and prosecution, due diligence, opinion work, and patent litigation. Should have 2+ years of experience in patent litigation and particularly those with experience in Hatch-Waxman litigation are preferred. Business trips within the US and occasionally abroad associated with litigation-related activities will be required.
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