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General Counsel Consulting

General Counsel
Consulting
provided
exceptional
service in helping
my organization
recruit for a hard
to fill position.
They did extensive
work on the front
end to understand
our needs and
our culture and
began referring
highly qualified
candidates almost
immediately.

Melinda Burrows
Deputy General Counsel
- Litigation and
Compliance, Progress
Energy Service Company
LLC

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Counsel Jobs > Intellectual Property/Counsel/In House/Niskayuna, New York Job in New York > Intellectual Property/Counsel/In House/Niskayuna, New York

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YOUR WINDOW TO A WORLD OF OPPORTUNITIES

Intellectual Property/Counsel/In House/Niskayuna, New York

Refer job# ICNC35471

Patent Counsel The candidate will work with other attorneys, agents and Global Research scientists to develop and protect breakthrough innovations in the fields of bioprocessing, diagnostic imaging, ultrasound, medical devices and diagnostic systems, and computer-enabled systems for handling, processing and/or imaging biological materials. Will prepare and prosecute patent applications in the fields of bioprocessing, diagnostic imaging, ultrasound, medical devices and systems, and computer-enabled systems for medical diagnostics and biological research. Mentor prep and pros by in-house patent engineers and coordinate prep and pros by outside counsel. Provide IP support for two or more internal client groups which will include drafting and coordinating a variety of agreements typically associated with a research organization; and provide IP-related opinion work and IP counseling and portfolio development. Prepare and prosecute US patent applications on a broad selection of inventions, principally in the fields of diagnostic imaging, healthcare information technology, medical devices and computer-enabled systems for use in the fields of medical diagnostics and biological research. Coordinate drafting and review of research agreements, material transfer agreements, licensing agreements, and prime and subprime government contract agreements, and provide oversight as needed. Manage the preparation and prosecution work by mentored patent engineers and coordinating outside counsel work. Implement and manage intellectual property strategies for various projects in collaboration with scientists and IP analysts. Provide patent counseling for one or more assigned research groups. Coordinate activities with patent attorneys from other company businesses. Provide patentability, non-infringement and invalidity opinions as needed. The candidate should have a Bachelor's degree in biomedical, bioelectrical, biomechanical or biochemical engineering or a closely related engineering discipline. Should also have a Law degree from an ABA accredited US law school. Admission to at least one state, or the DC Bar required. Should be registered to practice as a patent attorney before the USPTO. Must have 4+ years of experience preparing and prosecuting patents with a corporation or law firm IP practice, and be familiar with the PCT process. Demonstrated experience drafting research-related agreements required. Should have drafted from scratch 25+ patent applications and prosecuted 50 patent applications. Familiarity with integrated computer-enabled systems for use in the fields of medical diagnostics and biological research preferred. Demonstrated experience with patent portfolio management desired. Demonstrated experience with freedom to practice, validity/invalidity, and patentability opinion work preferred. Ability to train less experienced agents or attorneys desired.

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