Director, IP Development – Large Corporation – Phoenix, AZ

December 21, 2023Emp - Corporate (in-house), Work - Patent Litigation

Onsemi, a large corporation, is seeking an IP Development Director to work in Phoenix, AZ

IP Licensing and Litigation Counsel – Corporation – Phoenix, AZ

December 21, 2023Emp - Corporate (in-house), Work - Patent Litigation

Onsemi, a large corporation, is seeking an IP Licensing and Litigation Counsel to work in Phoenix, AZ

Patent Associate – Law Firm – Minneapolis, Minnesota

December 5, 2023- US - Midwest, Tech - Biotech, Tech - Electrical, Tech - Mechanical, Work - Patent Prosecution

Mueting Raasch Group is seeking a Patent Associate to work in Minneapolis, Minnesota

Patent Attorney – Law Firm – Remote

December 5, 2023- US - Telecommute, Emp - Law Firm, Work - Patent Prosecution

Rainier Patents P.S., a small law firm, is seeking a Patent Attorney to work remotely.

Patent Attorney or Agent – Law Firm – Westborough, MA

December 5, 2023- US - Northeast, Tech - Computer Science, Tech - Electrical, Tech - Mechanical, Work - Attorney, Work - Patent Agent, Work - Patent Prosecution

Bainwood Huang is seeking a new patent attorney or agent to assist with growing portfolio of patent work. We are a dedicated, reliable, and hard-working team of professionals looking to add to our ranks. Our clients are industry leaders in Internet technologies, electronics, software, and mechanical designs. Candidates should be computer savvy, with solid technical backgrounds and excellent writing and analysis skills. The firm provides excellent opportunities for mentoring.

Patent Agent – Law Firm – Multiple Locations

November 29, 2023Tech - Biotech, Tech - Electrical, Tech - Mechanical, Work - Patent Agent, Work - Patent Prosecution

Armstrong Teasdale, a large law firm, is seeking a Patent Agent.

IP Associate – Patent – Law Firm – Multiple Locations

November 28, 2023Tech - Computer Science, Tech - Electrical, Tech - Mechanical, Work - Patent Prosecution

Armstrong Teasdale, LLP, a large law firm, is seeking an IP Associate.

Senior Counsel – ANDA litigation – Law Firm – Florham Park, NJ

November 28, 2023- US - Northeast, Tech - Chemical / Pharma, Work - Patent Litigation

Pergament & Cepeda, a rapidly growing Intellectual Property Firm is looking for Senior Counsel - ANDA litigation for its Florham Park, New Jersey office. Highly competitive compensation package and benefits are offered for the right candidate. The firm has stable and growing list of generic pharmaceutical clients. At least 8 years of pharmaceutical litigation experience is required. Foreign language knowledge is a substantial plus.

Pharmaceutical Patent Prosecutor – Law Firm – Florham Park, NJ

November 28, 2023- US - Northeast, Emp - Law Firm, Tech - Chemical / Pharma, Work - Patent Prosecution

Pergament & Cepeda, rapidly growing Life science and IP firm in Morris County, New Jersey is looking for pharmaceutical patent prosecutor with up to 6-8 years of experience to prepare, file and prosecute domestic and foreign patent applications. Background in chemistry or pharma is required. The firm has a stable and growing client base of generic and branded pharma companies. Competitive compensation package with comprehensive benefits is offered. The right candidate will report to firm’s Chair of Patent Procurement and Prosecution with over 30 years of diversified pharmaceutical patent prosecution experience. Please send CV in confidence to mcepeda@pergamentcepeda.com and epergament@pergamentcepeda.com.

In-House Corporate Patent and Licensing Attorney – Corporation – Remote, New Mexico

November 24, 2023Tech - Biotech, Tech - Chemical / Pharma, Work - Attorney, Work - Licensing / Other Corporate, Work - Other Patent

Epiq Counsel, a large corporation, is seeking an in-house Corporate Patent and Licensing Attorney to work remotely.

Roles and Requirements:

Minimum of eight years’ of Intellectual Property experience with a deep focus on the patent process and commercialization of patents from ideation to launch.
Deep expertise in patent prosecution, portfolio management, and technology transfer.
Experience in-house, at a laboratory, university, or government setting.
Expertise in strategically aligning IP assets (including patent applications) with clients’ commercial objectives, analyzing and mitigating risk across the organization, and ensuring quality deliverables tailored to clients’ commercial objectives.
Demonstrated skill in and knowledge of the concepts and processes involved in preparing for negotiations, conducting negotiations, and counseling clients regarding developments and options in a negotiation relating to intellectual property.
Client service orientation with excellent communication skills, including the ability to manage a large patent portfolio while collaborating closely with a variety of internal business clients, outside counsel and inventors to drive expert support and guidance.
Juris Doctorate from an accredited law school.
Undergraduate or postgraduate experience in biology or physics preferred but not required.
Registration to practice before the U.S. Patent and Trademark Office.
Member in good standing of a Bar of at least one state or the District of Columbia.

Responsibilities:

Partner with the legal and business teams focused on the intersection of national security and science.
Support the licensing group by understanding their key business strategies.
Manage, oversee and coordinate on a large patent portfolio across a variety of sciences and technologies. Including but not limited to patent preparation and prosecution functions between the business division, inventors, licensing group, and outside counsel for multiple patent sub-portfolios.

Apply Online at:
epiqcounsel_apply@epiqglobal.com

Please include a resume and best contact information for an interview.

Additional Info
Employer Type: Large Corporation
Job Location: Remote, New Mexico

US Patent Attorney – Law Firm – Dresden, Germany

November 8, 2023- Europe, Work - Patent Prosecution

Viering, Jentschura & Partner mbB, a large law firm headquartered in Munich, Germany, and with offices throughout Germany and in Singapore, is seeking a U.S. patent attorney in our Dresden office. Our U.S. team drafts and prosecutes patent applications in the United States for a variety of U.S., European, and Asian companies; drafts legal opinions (e.g. infringement, invalidity, and freedom to operate); and counsels clients on U.S. litigation and post-grant proceedings.

Senior Patent Agent – Corporation – San Jose, CA (hybrid)

November 7, 2023- US - West, Emp - Corporate (in-house), Tech - Biotech

Takara Bio USA, Inc., a small corporation, is seeking a Senior Patent Agent to work in San Jose, CA

Roles and Responsibilities:

Primary responsibility for managing communications with outside counsel; taking the lead in providing guidance to counsel on the preparation and prosecution of domestic and foreign patent applications so as to best match claims to our products and strategy.
Works with R&D to assess patentability of new inventions; assist in drafting and reviewing related invention disclosures and drafting provisional patent applications.
Review and prepare freedom-to-operate opinions on 3rd party IP in collaboration with outside counsel, as necessary. Undertakes proactive reviews, where necessary.
Responsible for assigning products to relevant licenses for royalty reporting purposes.
Actively guide senior management in evaluating licensing and business transactions based on review of relevant IP.
Proposes strategies for developing the Company’s patent portfolio based on strong understanding of the Company’s technologies and those of its competitors.
Provide periodic training to Company employees regarding the protection of intellectual property.
Maintain knowledge of relevant laws, regulations or statutes affecting the Company’s intellectual property.
Proposes IP expenditure budgets, based on agreed strategy. Assist in managing expenses to budget.
This position may have supervisory responsibilities.A Ph.D. in a life-science discipline required; molecular biology and NGS experience preferred.
Must be a USPTO registered Patent Agent.
A minimum of 6 years’ experience preparing and prosecuting patent applications and conducting patentability and freedom-to-operate searches both at a law firm and within a company environment.
Demonstrated ability to lead IP reviews with key internal stakeholders.
Ability to suggest strategies for internal IP based on understanding of external IP and company’s technology position in the market.
Skilled in preparing, filing, and prosecuting domestic and foreign patent applications.
Strong advocacy skills in connection with patent prosecution.
Proven ability to handle multiple projects and effectively manage priorities so as to meet tight deadlines.
Independent and self-motivated, with a strong sense of urgency and ability to drive a project to completion.
Excellent oral and written communication skills – must be able to communicate clearly both within the organization and externally to drive projects forward.
Highly effective analytical and problem-solving skills, including excellent attention to detail.
Collaborative personality with strong interpersonal skills.
Must be fluent in written and spoken English.
Proficient in Microsoft Office, including Excel and Word.

Apply online at:
https://jobapply.page.link/ZiK5L

Additional Info
Employer Type: Small Corporation
Job Location: San Jose, CA (hybrid)

Patent Litigation Associate – Law Firm – Atlanta, GA or Remote

November 7, 2023- US - MidAtlantic and South, Emp - Law Firm, Tech - Computer Science, Tech - Electrical, Tech - Mechanical, Work - Patent Litigation

Perilla Knox & Hildebrandt LLP (PKH) is a dynamic and forward-thinking law firm based in Atlanta, Georgia that specializes in intellectual property law. We are renowned for our commitment to delivering high-quality legal services to our clients. Our fast-growing team is composed of passionate and experienced attorneys who excel in patent litigation, patent prosecution, and trademark law. We are seeking a talented and motivated Patent Litigation Associate to join our growing team, ideally someone local to Atlanta. Exceptional candidates will be considered for a remote position.

Job Description:

As a Patent Litigation Associate at PKH, you will have the opportunity to work on challenging cases in the field of intellectual property law. Your role will involve supporting senior attorneys in handling patent litigation matters, providing legal counsel to clients, and contributing to our team's success.

Key Responsibilities:

Case Management: Manage and assist in all aspects of patent litigation cases, including legal research, drafting pleadings, motions, and discovery requests, and participating in trial preparation.
Legal Research: Conduct in-depth legal research and analysis on various patent law issues, including patent validity, infringement, and other related matters.
Client Communication: Build and maintain strong client relationships by providing strategic legal advice and regular case updates.
Court Appearances: Appear in federal and state courts, as well as before administrative bodies, such as the United States Patent and Trademark Office (USPTO), to represent our clients in patent litigation proceedings.
Team Collaboration: Collaborate with other attorneys, paralegals, and support staff to ensure the successful resolution of cases.
Client Development: Assist in business development efforts, including networking and expanding client relationships.

Qualifications:

Juris Doctor (JD) degree from an accredited law school.
Admission to the bar in Georgia or other suitable jurisdiction.
2+ years of patent litigation experience.
Strong understanding of patent law and intellectual property litigation procedures.
Excellent written and oral communication skills.
Exceptional research and analytical abilities.
Demonstrated ability to work independently and as part of a team.
A strong work ethic and dedication to delivering top-notch legal services.

Preferred Qualifications:

Experience with patent prosecution or patent portfolio management.
Technical background in a relevant field such as engineering or the sciences.
Experience with post-grant proceedings (e.g., IPRs) before the USPTO.
Prior experience in client development and marketing.

Please submit your resume and any additional relevant materials via LinkedIn or email to careers@pkhip.com with the subject line "Patent Litigation Associate Application - [Your Name]."

Additional Info
Employer Type: Law Firm
Job Location: Atlanta, GA or Remote

US Patent Agent – Law Firm – Seoul, Korea

November 2, 2023- Asia, Emp - Law Firm, Tech - Chemical / Pharma, Tech - Computer Science, Tech - Electrical, Tech - Mechanical, Work - Patent Agent, Work - Patent Prosecution

Lee International IP & Law Group, a large law firm, is seeking a US Patent Agent to work in Seoul, Korea

Patent Litigation Associate Attorney – Law Firm – Denver, CO

October 31, 2023- US - Southwest, Work - Attorney, Work - Patent Litigation

Sheridan Ross P.C. is seeking a Litigation Associate to join the Intellectual Property and Commercial Litigation Practice Group. Candidates will have 3-6 years of litigation experience with excellent academic credentials. A commitment to litigation and trial work is necessary. A technical background along with a federal District Court or Circuit Court clerkship are preferred. USPTO bar admittance is also preferred. The home office for this position is located at Sheridan Ross’ Denver office, although candidates need not be primarily located in Colorado. Qualified candidates will have experience with complex litigation involving intellectual property, securities, contracts, anticompetitive conduct and other forms of complex commercial disputes. Qualified candidates will have specific experience (1) drafting discovery and dispositive motions, (2) managing eDiscovery using a variety of eDiscovery tools and techniques and (3) supporting lead counsel through depositions and/or trial. Top candidates are motivated self-starters with superb communication and writing skills, a commitment to excellence and an ability to thrive in a fast-paced trial practice.

Essential Functions:

Compiling, organizing and analyzing discovery in document intensive cases involving complex business disputes.
Engaging opposing counsel and third parties over discovery disputes.
Drafting pleadings, dispositive motions, Federal Circuit and Markman briefs and other related litigation documents.
Managing all aspects of discovery including conducting interviews and gathering ESI (experience with various document review platforms, such as Relativity, is preferred).
Preparing for depositions of fact and expert witnesses that will be taken by members of the team.
Arguing hearings and provide support to senior litigators for other court proceedings.
Interacting directly with clients, providing strategic litigation and risk management advice.
Preparing for and attending trials with the trial team assigned to the matter.

Job Requirements:

Familiarity with ESI Protocols and Tools
Drafting of correspondence, motions and other written product
1750 hours annually
Dedication to litigation and/or trial practice

Education:

Bachelor’s degree
Juris Doctor from an ABA-accredited school

Experience:

3-6 years of patent litigation experience in private law firm
Federal clerkship with a United States District Court or Circuit Court (preferred)
Experience using ESI protocols and tools
Experience supporting or taking depositions
Experience talking lead on the composition of dispositive motions

Other Requirements:

Law Review/Law Journal or Moot Court

Sheridan Ross is committed to fostering an environment that embraces and promotes equality, diversity, and inclusiveness where everyone has the opportunity to excel. We encourage our professionals to be themselves and share their perspectives, experiences, and insights. Individuals seeking employment at Sheridan Ross are considered without regards to race, color, religion, sex, sexual orientation, gender identification, national origin, age, marital status, ancestry, physical or mental disability, veteran status, or genetic information, among other protected bases.
Sheridan Ross offers a competitive pay and benefits package to full-time employees including health care benefits, personal paid time off, paid holidays, 401(k) matching, discretionary bonus, parking reimbursement, and more.
Base Salary Range: $130,000-$160,000

Interested applicants should submit a resume to hr@sheridanross.com.

Additional Info
Employer Type: Law Firm
Job Location: Denver, CO

Mechanical/Electro-Mechanical or Electrical Technologies Patent Attorney or Agent – Law Firm – Greenville, SC

October 30, 2023- US - MidAtlantic and South, Emp - Law Firm, Tech - Electrical, Tech - Mechanical, Work - Attorney, Work - Patent Agent

Dority & Manning is a rapidly growing intellectual property boutique with a unique approach to legal service and business operations. Not only do we believe that success is built upon exceptional relationships – internally and externally, but we also offer a distinctive firm structure and innovative solutions tailored to individual client needs. Our firm thrives on foundations of trust, openness, and integrity to build an environment of true collaboration. We aim to invest in our people, culture, and systems to create an atmosphere where all people grow and succeed.

Patent Attorney or Agent / Senior Patent Attorney or Agent, Wireless Communications – Corporation – Reston, VA

October 30, 2023Emp - Corporate (in-house), Tech - Computer Science, Tech - Electrical, Work - Attorney, Work - Patent Agent, Work - Patent Prosecution

Ofinno is a leading research and development lab for 5G/6G, Next-Gen Wi-Fi, and video compression technologies. Home to some of the world’s most prolific inventors, Ofinno helps companies stay ahead of the technological curve by outsourcing their R&D from ideation to delivery.

We are growing rapidly, and we need hard-working people to keep our enterprise at the leading edge of innovation. Our legal team works shoulder-to-shoulder with the technology team, from the conception of a new idea until the moment the patent is received. The end result is an industry-recognized portfolio, with global reach, at the core of next-generation tech.

Cross-training is what separates Ofinno from other R&D labs. We challenge our attorneys and agents to master the technical concepts underlying our inventors’ ideas. At the same time, our legal team is expected to educate our inventors on the legal aspects of intellectual property. Ofinno’s culture of mutual learning and collaboration is unique among R&D labs, and absolutely can not be duplicated at a law firm.

Job Description:

The open position is for a Patent Attorney. Ofinno has a similar position for a Patent Agent. Depending on skills and experience, the applicant may be considered for a role as Senior Patent Attorney or Senior Patent Agent.
The Patent Attorney will report to the IP Director for 5G/6G at our offices in Reston, Virginia. The Patent Attorney’s primary responsibility is to prosecute patent applications, including patents for standard-essential technologies in the 5G/6G technology area.

Ofinno relies on our tech experts to help interpret the cited art and identify distinctions. Our legal team is able to focus on crafting persuasive arguments, which helps Ofinno to obtain quality patents on a compact schedule. Ofinno’s patent portfolio has global reach, and our legal team is responsible for coordinating prosecution strategies across multiple global jurisdictions.

Other responsibilities include:

Reviewing patent applications
Assisting with drafting of specifications, figures, and claims
Assisting with filings and payments of fees
Searching prior art for relevant subject matter
Helping to prepare client presentations

Qualifications:
To fill the role of Patent Attorney, Ofinno is looking for an experienced candidate who is licensed to practice before a state bar and the USPTO. The candidate has an undergraduate degree in Electrical Engineering or Computer Science, and has experience with 4G, 5G, 6G or Wi-Fi technology. Experience with European patent practice is a plus factor.

Additional Information
Our people are our business, and it is our job to take care of you. We know you have to see it to believe it, but here are some of the perks you can count on:

Competitive salaries within the range of $120-180k for a Patent Attorney, and up to $225k for a Senior Patent Attorney, with regular opportunities for salary increase, and additional compensation based on company performance and valuation.
401(K) matching -- We help you plan and save for retirement with a 401(K) matching program that’s available on day one.
Free healthcare plans-- Ofinno covers full premiums for you are your family on select healthcare plans, including employer HSA contributions if applicable.
Free Food -- Our kitchen is always fully stocked, including lunch, protein bars, fruit, sodas, coffee and tea.
Unlimited Paid Time Off -- Our lives are enriched by family time, vacations and personal time, so we offer unlimited paid time off and sick leave.
On-campus gym -- Unwind, reduce stress and feel great – even when you’re at work.
Other benefits, too long to list -- Please discuss with our great People Ops team about additional benefits offered.
All your information will be kept confidential according to EEO guidelines.

To join Ofinno, please submit a resume, cover letter, and some writing samples to https://ofinno.com/careers/.

The writing samples preferably include: (a) a patent application that you have written in the area of 4G, 5G, 6G or Wi-Fi technology; and (b) at least one response to a USPTO or EPO Office Action. For the Office Action Response, we are particularly interested in the persuasiveness of your arguments regarding novelty and non-obviousness. We would like to see your best arguments regarding novelty or non-obviousness (for example, without relying on substantive claim amendments to overcome a rejection). Please do not provide Office Action responses that are primarily focused on 35 U.S.C. § 101 or 112.

Additional Info
Employer Type: Small Corporation
Job Location: Reston

Patent Attorney or Agent / Senior Patent Attorney or Agent, Video Compression – Corporation – Reston, VA or Remote

October 30, 2023- US - MidAtlantic and South, Emp - Corporate (in-house), Tech - Computer Science, Tech - Electrical, Work - Patent Prosecution

Job Description:

The Patent Attorney will report to the IP Director for Video Compression at our offices in Reston, Virginia. The position is open to remote employees, but requires substantial collaboration with team members in the US Eastern time zone and throughout Europe. Ofinno offers a relocation bonus for a candidate who moves to Reston, Virginia.

The Patent Attorney’s primary responsibility is to work with our tech team to draft patent applications, including patents for standard-essential technologies in the video compression technology area.

Other responsibilities include:

Prosecuting patent applications
Assisting with filings and payments of fees
Searching prior art for relevant subject matter
Helping to prepare client presentations

Qualifications

To fill the role of Patent Attorney, Ofinno is looking for an experienced candidate who is licensed to practice before the USPTO and/or EPO. The candidate has an undergraduate degree in Electrical Engineering or Computer Science, and has experience with video compression technology. Experience with point-cloud compression, dynamic mesh coding, or MPEG immersive video standards is a plus factor.

Additional information
Our people are our business, and it is our job to take care of you. We know you have to see it to believe it, but here are some of the perks you can count on:

Competitive salaries within the range of $120-180k for a Patent Attorney, and up to $225k for a Senior Patent Attorney, with regular opportunities for salary increase, and additional compensation based on company performance and valuation.
401(K) matching -- We help you plan and save for retirement with a 401(K) matching program that’s available on day one.
Free healthcare plans-- Ofinno covers full premiums for you are your family on select healthcare plans, including employer HSA contributions if applicable.
Free Food -- Our kitchen is always fully stocked, including lunch, protein bars, fruit, sodas, coffee and tea.
Unlimited Paid Time Off -- Our lives are enriched by family time, vacations and personal time, so we offer unlimited paid time off and sick leave.
On-campus gym -- Unwind, reduce stress and feel great – even when you’re at work.
Other benefits, too long to list -- Please discuss with our great People Ops team about additional benefits offered.

All your information will be kept confidential according to EEO guidelines.

To join Ofinno, please submit a resume, cover letter, and some writing samples to https://ofinno.com/careers/

Do you have any special instructions for applicants, such as materials to include with their submission?
The writing samples preferably include: (a) a patent application that you have written in the area of video compression technology; and (b) at least one response to a USPTO or EPO Office Action. For the Office Action Response, we are particularly interested in the persuasiveness of your arguments regarding novelty and non-obviousness. We would like to see your best arguments regarding novelty or non-obviousness (for example, without relying on substantive claim amendments to overcome a rejection). Please do not provide Office Action responses that are primarily focused on 35 U.S.C. § 101 or 112.

Additional Info
Employer Type: Small Corporation
Job Location: Reston, VA or Remote

Patent Paralegal – Law Firm – Broomfield, CO; Denver, CO; Chicago, IL; Madison, WI; Milwaukee, WI; Waukesha, WI; Raleigh, NC; Salt Lake City, UT; or Washington D.C.

October 29, 2023- US - MidAtlantic and South, - US - Midwest, - US - Southwest, Emp - Law Firm, Work - Paralegal / Legal Secretary

Michael Best & Friedrich LLP is seeking a Patent Paralegal to join our Broomfield, Chicago, Denver, Madison, Milwaukee, Raleigh, Salt Lake City, Washington D.C. or Waukesha office. The Patent Paralegal will work closely with attorneys in the Firm’s Intellectual Property Group.

The person in this position will be responsible for providing legal support on a variety of tasks focused on patent prosecution. Individuals with exceptional client service and communication skills, as well as experience in a fast-paced environment will be successful in the Patent Paralegal role. The ideal candidate will have at least 2 years of experience working as a paralegal in patent prosecution.

What You'll Be Doing:

Collaborate with attorneys to prepare, file, and prosecute new patent applications in the PCT, U.S. and foreign jurisdictions
Generate reports and monitor daily docket of deadlines and ensure that deadlines are met and system is properly updated
Facilitate ongoing communication with attorneys regarding upcoming filing deadlines
Communicate with internal staff, foreign associates and clients regarding routine or procedural patent prosecution events
Ability to meet 1,250 billable hour requirement and production target
Assist with patent due diligence projects
Work with the IP team to develop, implement, and maintain docketing processes, procedures and policies for patents, and patent applications
Maintain the integrity of electronic data in accordance with firm policy and procedures
Perform additional projects and administrative tasks as assigned

Job Requirements

Knowledge Base & Education:

Associate’s degree and minimum of two years of experience working as a paralegal in patent prosecution
The ability to learn rules, regulations, and procedures specific to the assigned practice area as well as policies and procedures established by the firm and apply them accordingly
Exceptional attention to detail and organizational skills, as well as the ability to effectively prioritize multiple projects while managing critical deadlines
Highly proficient in Microsoft Office Suite programs (Word, Excel, PowerPoint, Outlook)
Knowledge of Anaqua, Elite and/or iManage (or similar document management system) is a plus

Adaptability:

Ability to learn and embrace new skills and best practices as the position evolves and Firm needs change
Ability to work well under pressure and meet tight deadlines
Ability to work well independently as well as effectively within a team

Collaboration:

Ability to develop relationships and foster teamwork at all levels of the Firm

Communication:

Excellent interpersonal skills and ability to work effectively with a diverse group of internal and external clients, attorneys, and staff
Excellent oral and written communication skills
Ability to manage confidential information and sensitive situations with tact and discretion

Problem Solving Skills:

Ability and confidence to identify and analyze issues, make decisions, and initiate actions/solutions
Ability to respond to unexpected challenges, including proactively developing innovative solutions to complex problems while maintaining a professional demeanor

Professionalism:

Ability to maintain composure and demonstrate good judgment

Other:

Valid authorization to work in the U.S.

To be considered, please apply online at: https://lawcruit.micronapps.com/sup/JobPostingDetails.aspx?lawfirm=MiUyNTVFSms=&JobId=MW4lM2Yyb1A=&at=JTNhJTQwJTNiQQ==

Additional Info
Employer Type: Law Firm
Job Location: Broomfield, CO; Denver, CO; Chicago, IL; Madison, WI; Milwaukee, WI; Waukesha, WI; Raleigh, NC; Salt Lake City, UT; or Washington D.C.

In-House IP Counsel – Corporation – Boston, Ma or Remote

October 29, 2023

Elucid, a small corporation, is seeking an In-House IP Counsel to work in Boston, Ma or remotely.

We're looking for an in-house intellectual property attorney who will play a critical role in ensuring that Elucid’s IP is successfully protected. Our ideal candidate will have a minimum of 8 years of IP experience and have a strong technological background including an advanced technical degree. Technical familiarity with and understanding of SaMD and AI is a plus. In this role, you will work with the Elucid team and outside counsel to support high volume US and foreign patent generation across the organization.

Primary Responsibilities:

Lead the development and management of Elucid’s IP portfolio, collaborating closely with internal technical stakeholders on patent applications
Draft, file, and prosecute patent applications and manage outside counsel as appropriate
Lead collaboration with and management of outside counsel in relation to IP matters, as appropriate
Be a trusted advisor to internal stakeholders to provide practical and strategic advice in navigating the complex and evolving IP landscape in the SaMD and AI arena
Provide actionable legal advice and strategies to internal stakeholders on a wide variety of IP matters, including patents, trade secrets, freedom-to-operate and validity
Collaborate cross-functionally with Elucid’s R&D team and business leadership to develop and enhance IP awareness and implement IP strategies including the promotion of internal filings of invention disclosures to ensure that company innovations are protected
Maintain a deep and current awareness of evolving relevant laws and regulations in the IP space for SaMD, AI, software (including open-source) and healthcare to mitigate risks associated therewith
Develop and maintain a deep and current awareness of the competitive IP landscape
Draft, revise and negotiate IP terms of various contracts, including collaboration agreements, licensing agreements, joint development agreements and non-disclosure agreements
Render legal opinions regarding patentability, validity, non-infringement and freedom to operate

Education and Experience:

JD from an ABA-accredited law school
Admission to a state bar in good standing
Admission to practice before the U.S. Patent and Trademark Office in good standing
Ph.D. or master’s degree in a related technical field (i.e., electrical engineering, computer science, computer engineering or associated discipline) with excellent academic credentials
A minimum of 8 years' IP experience in a corporation or, law firm
Experience in drafting and prosecuting patent applications worldwide
Experience developing and managing global IP portfolios, and drafting, revising and negotiating transactional agreements including licensing agreements, JDAs, and NDAs
Excellent written and oral communications skills
Strong organizational skills, keen attention to detail and the ability to manage many projects at once in a timely manner

Apply online at:
https://elucid.applytojob.com/apply/GgHWngEijB/InHouse-IP-Counsel?source=patentlyo

Additional Info
Employer Type: Small Corporation
Job Location: Boston, Ma or Remote