DSM, 
is seeking a Patent Attorney to work in its Columbia, Maryland, offices.
Challenge
Creation, development, defense and exploitation of the extensive patent portfolio of DSM.
Responsibilities
- Handles all IP issues for entrusted accounts including filing and prosecuting patent applications, obtaining patents, assessing freedom to operate, evaluating and negotiating IP provisions in contracts, and analyzing third party patents
- Defends own patents and attacks third party patents having an impact on business activities where appropriate, particularly in written and oral opposition and appeal proceedings before the US Patent & Trademark Office and corresponding proceedings worldwide
- Supports evaluation of third-party patent estates; assists in formulating recommendations to the business regarding third-party patent estates; and supports oppositions, inter-parties reviews, nullity actions, invalidation actions that are filed against third-party patent estates
- Prepares Information Disclosure Statements
- Assists as needed with in-licensing and out-licensing opportunities
- Assists in Freedom to Operate, non-infringement and invalidity analysis
- Maintains a high level of patent awareness throughout Business and R&D
- Helps Management to define and implement an adequate IP strategy aligned with the respective Business Group
- Advises upon request, Management, Business and/or Legal, on strategic cooperation with external organizations, divestments and freedom to operate
- Where appropriate, advises and/or prepares the IP relevant and technical part of the pleadings for a lawyer and/or appears in court
- Builds interactive relationships with customers to ensure proactive involvement with the Business Team
- Motivates colleagues to consider strategic IP plans as integral to the Business
- Maintains a high level of awareness of world-wide patent prosecution procedure and practice, with an emphasis on the US
Qualifications
- Understands scientific, technical, legal and commercial aspects of DSM’s business
- Possesses necessary communication skills in order to provide and receive information from a large variety of functions (R&D, Business, patent agents worldwide, legal, etc.)
- Ability to understand, analyze and weigh:
ocomplex literature in various research fields;- data supplied by R&D and/or Business for filing, prosecuting, defending DSM's patent estates and opposing third party patents;
- the importance and strategic value of inventions; and
- the relevance of submissions of third parties
- Ability to understand the core of an invention and obtain valid and meaningful patent protection vis-a-vis the prior art and DSM’s competitors
- Ability to choose a convincing line of argumentation when defending DSM's patent rights and challenging assertions of third parties that adversely affect DSM’s patent rights
- Flexible, able to prioritize and work as part of a large team
- Ability to handle numerous cases simultaneously, many of which are subject to strict deadlines
- Specialized knowledge of U.S. patent law
- Specialized knowledge of international regulations in the field of patent prosecution and various foreign patent systems that are important for DSM’s business
- JD required with 10 plus years of industry experience
- Specialized post-academic knowledge of US patent law, trademark law, industrial designs & models law, unfair competition & copyright law
- Specialized knowledge of international regulations in the field of IP and various foreign patent systems that are important for Business Group’s business
- Good communication skills
Contact
Apply by emailing Kim Schwint at: kim.schwint@dsm.com.
Additional Info
Employer Type: Large Corporation
Job Location: Columbia, Maryland