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Energy Service Company

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Pennsylvania - Patent Counsel I
Refer job# 0LM624967
Patent Counsel I
The candidate will assist the company with its intellectual property needs and requirements. Will perform legal services related to the procurement, protection and enforcement of the company's intellectual property rights on a world-wide basis and provide counsel to management and to technical, research and marketing personnel with respect to such rights; provide guidance to management and research personnel for avoidance of infringement of the intellectual property rights of others. Review and evaluate technical developments of the company and prepare, file and prosecute US and foreign patent applications covering the patentable aspects of such developments with the objective of obtaining an exclusive position in a technical area for a limited number of years. Review and evaluate marketing and technical activities of others, counsel management regarding possible infringement by such parties of company intellectual property rights, particularly patent rights. Negotiate settlements for potential conflicts and assist outside counsel in any litigation brought against parties believed to be infringing company's intellectual property rights. Review and evaluate marketing and technical activities of the company, counsel management and technical personnel as to how to avoid infringement of third party intellectual property rights negotiate settlements for potential conflicts and assist outside counsel in defending any intellectual property litigation brought against company. Review advertising, product labels, packaging, product data sheets and the like relating to company products, as well as proposed company publications or publications of company employees or consultants, to ensure that company rights in proprietary technical information and intellectual property are properly protected, encroachment on the rights of others is avoided and compliance with contractual obligations. Prepare, negotiate, and interpret agreements relating to licensing and/or assignment of US and foreign patents or other intellectual property rights to and/or from the company in order to obtain use of technology of others, allow the company to operate with minimal restrictions in its desired areas, and/or provide royalty income to the company for the use by others of company technology. Prepare, negotiate, and interpret agreements relating to consultantships, grants, technical disclosures, and the proprietary rights aspects of employer-employee relations without jeopardizing company rights or incurring unreasonable liabilities. Review intellectual property estates of third parties for potential acquisitions and provide input regarding intellectual property matters for potential divestitures. Guide clients on the company's patent/IP strategy and act at all times as a valued business partner for those clients. Communicate regularly and work closely on relevant matters with colleagues at the company in Germany as well as with counterparts in China. Conduct educational seminars in intellectual property law within the company.

The candidate should have an undergraduate degree in a chemical discipline (chemistry, bio-chemistry, chemical engineering or related field). Should also have a J.D. or an LL.M. degree from an accredited law school as well as admission to a State Bar and licensed to practice before the USPTO. Must have 7+ years of experience as a patent attorney to include: drafting and prosecuting patent applications, preferably in the area of polymer technology, drafting and negotiating licenses and other agreements relating to intellectual property rights, providing freedom to operate analyses and rendering opinions on the validity and infringement of patents as well as on the relevance of patent applications with respect to a defined area of activity. Should be well versed in patent law, the rules of the USPTO and in those aspects of antitrust law which relate to intellectual property. Familiarity with recent court decisions relating to patents, licenses, antitrust, trade secrets and unfair competition required. Should have ability to analyze and recognize the significance of complex developments in several technological areas, such as organic and polymer chemistry, chemical production equipment and processes and analytical instrumentation. Skill in drafting and prosecuting patent applications and in drafting and negotiating licenses and other agreements relating to intellectual property rights required. Should preferably have experience in technological areas relating to polymers and chemicals. Experience in a laboratory or field setting and/or published papers in scientific journals or other publishing media are a plus. Familiarity with the process of filing and prosecuting patent applications outside the US require. Teaching experience would be preferred.

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