SHFL entertainment is seeking a Patent Counsel to work in its Las Vegas, Nevada, offices. In this vital position you will effectively use the U.S. and foreign patent office processes to obtain patents in support the company’s business objectives.
• Train and mentor employees; plan, assign, delegate and direct work; appraise performance; reward and discipline employees; resolve employee issues.
Essential Duties and Responsibilities:
• Prepare, file and prosecute U.S. and PCT applications in the computer systems software arts and business method art areas. Manage U.S. and foreign outside counsel in the preparation and prosecution of patent applications.
• Assign patent drafting projects to outside counsel.
• Conduct a complete QC review of draft patent applications.
• Draft patent applications and prepare responses to Office Actions.
• Prepare foreign counsel filing instructions and proposed examination responses.
• Review draft patent applications with inventors, make corrections.
• Electronically file U.S. patent applications.
• Oversee the entry of data into the case management system to assure that appropriate data and deadlines are entered.
• Effectively manage outside counsel spending.
• Assign, review and approve outside counsel projects in advance of deadlines to minimize extension of time fees and avoid surcharges.
• Review invoices to confirm bills conform to fee arrangements and projects are coded to the appropriate accounts.
• Track projects assigned to outside counsel and estimate cost.
• Forecast patent expenses with accuracy.
• Assist in preparing the patent budget and adhere to the budget.
• Interview inventors, create invention documentation, conduct patentability searches, conduct freedom of use studies, and identify work-around designs.
• Meet with technical staff, take disclosures and draft disclosure documents with sample claims.
• Conduct prior art searches of sample claims.
• Draft novelty reports.
• Review products in development and conduct freedom of use studies.
• Propose work-around designs as needed with inventors.
• Assist litigation manager in evaluating patent cases.
• Identify potential patents to assert.
• Create claim charts to illustrate infringement, non-infringement or invalidity.
• Identify prior art to invalidate patents asserted against the company’s products.
• Propose continuation claim filing strategies in view of competitor products.
• Participate in the management of the patent activities of the company by participating in IP Steering Committee Meetings.
• Assist in preparing an agenda for meetings.
• Actively participate in discussions relating to agenda items.
• Make appropriate recommendations based on business needs and goals.
• Conduct IP Due Diligence and assist transactional attorneys with IP-driven transactional work.
• Evaluate scope and quality of IP for possible purchase.
• Identify patents for monetization.
• Assist transactional attorneys in drafting appropriate documents to review, transfer or license IP.
• Participate in special projects as directed by the General Counsel.
Required Job Skills:
• Working knowledge of USPTO and PCT practice.
• Working knowledge of computer network system architecture technology.
• The ability to communicate and effectively work with technical staff, executive team and legal team.
Computer Equipment and Software:
• Working knowledge of Microsoft Office Suite and WINDOWS software.
• Specialized software for patent practitioners.
Education and Experience:
• Technical BS degree in Electronic or software arts, preferably in network software architecture.
• At least 8 years U.S. patent prosecution experience, preferably in the software and business method arts. Prior in-house experience, as well as law firm experience is preferred. Gaming industry experience is also preferred.
• Law Degree from an ABA approved law school.
• State bar membership in at least one state.
• Competitive salary commensurate with experience.
Competitive salary commensurate with experience.
Benefits include a group health, dental and vision plan, long term disability and life insurance, paid vacations and paid holidays.
To apply please email your resume to:
1106 Palms Airport Drive
Las Vegas, NV 89119
SHFL entertainment is an equal opportunity employer.
Principals only please. Temporary or permanent placement recruiters, please don't contact this job poster. Please do not contact job poster about other services, products or commercial interests.
Employer Type: Small Corporation
Job Location: Las Vegas, Nevada
SHFL entertainment is a gaming supply company specializing in providing its casino customers with improved profitability, productivity and security, as well as popular cutting-edge gaming entertainment content. SHFL entertainment and its regional subsidiaries are the worldwide gaming industry's leading developers of table game content and technology. We invite you to bring your talent to our table to help create our future. In turn, SHFL entertainment provides a culture where your future success and growth are truly a result of your own efforts and achievements. Being on our team means sharing in our vision, that of being the preeminent player in a rapidly expanding global industry, developing compelling and innovative product lines. Our future depends on bright, energetic, talented people who share a passion for creating the best products, the best place to work, and promote our continued success. SHFL entertainment is included in the S&P Smallcap 600 Index.