Patent Attorney – Large Corporation – Goleta, California

karl-storzKarl Storz is seeking a patent attorney for their Goleta, California office.

JOB SUMMARY: Brief description of what this person does, in simple direct terms.

Under general guidance but limited direct supervision, will perform patent and trademark drafting and prosecution services, and will draft licenses related to intellectual property rights.  Provide direct oversight of the Karl Storz North America IP Staff.

ESSENTIAL FUNCTIONS: List the essential duties and responsibilities of the position, in order of importance and/or amount of time spent.

  • Prepare, file, and prosecute to issuance provisional and non-provisional patent applications.
  • Draft and review business contracts, including distribution, supply and manufacturing agreements, purchase agreements, licenses, non-disclosure agreements.
  • Prepare intellectual property related legal opinions on issues such as freedom to operate, ownership, infringement, and validity.
  • Perform patent related due diligence in commercial transactions such as mergers, acquisitions, divestitures, and licensing.
  • Communicate effectively with business areas, such as R&D, marketing, and sales on patent and trademark matters.
  • Draft, file and prosecute patent applications on behalf of company before the U.S. Patent and Trademark Office (USPTO); provide legal representation in cases of patent infringement and related litigation matters. Conduct searches of prior art to evaluate whether an invention has been previously represented in the public domain and is patentable.
  • Review and draft contracts for the company (both general business related and intellectual property related) as assigned.
  • Keep fully informed of all new and/or evolving developments in patent and trademark law and keep executive management informed of applicable new laws, their impact on the organization, and the progress and results of court cases and/or legal opinions.
  • Develops operational policies and procedures for tracking, maintaining and updating legal documentation and records.
  • Selects, develops, and evaluates personnel to ensure the efficient operation of the function.
  • Regular attendance is an essential job function.
  • Will spend part of his/her time as a member of continuous improvement teams undertaking projects and seeking ways to improve the quality of KSI’s products and services.

ADDITIONAL RESPONSIBILITES: List other important functions that are secondary duties but may be time consuming.

  • Investigate and analyze competing products for possible infringement of KS patents; reporting findings to Senior KS Executive Management and KST Patent Management.
  • Manage coordination of relevant cross-company IP issues; providing feedback and recommendations to KS Executive Management and KST Patent Management, as appropriate.
  • Monitor and analyze competitive patents, reporting and making recommendations to Senior KS Executive Management and KST Patent Management, as appropriate.
  • Train and support key KS employees at various responsibility levels on patent search skills and techniques, and related patent claims interpretation, in and related to their particular specialty.
  • Performs other related duties as assigned by supervisor.

KNOWLEDGE, SKILLS, ABILITIES: What does a person in this position need to be able to do?

  • Knowledge of state and federal laws governing intellectual property and patents.
  • Knowledge of patent related case law from the U.S. Supreme Court, U.S. Court of Appeals for the Federal Circuit, and U.S. District Courts, and experience in analyzing the patentability of inventions and the validity of patents, and drafting related opinions and or other legal documents.
  • Ability to read, analyze, and interpret the most complex documents.  Ability to conduct complex and extensive research, write reports, legal briefs, business and legal correspondence.
  • Ability to use patent and trademark tracking software in order to track deadlines.
  • Knowledge of medical device quality system regulations and standards (eg, U.S. FDA Quality System Regulation 21CFR Part 820, ISO13485, ISO9001)

EDUCATION AND EXPERIENCE:  What is the usual educational background and work experience of an individual qualified to perform this job?

  • BA/BS degree (or equivalent training and experience) in scientific or engineering disciplines
  • J.D., member of CA or other State Bar; license to practice law in the state, required
  • Minimum of five years patent prosecution experience; plus registration to practice before the U.S. Patent & Trademark Office
  • Experience reviewing and drafting contracts is preferred
  • German language is a plus.

Online - Karl Storz - Open Goleta positions - Position #8492

Additional Info
Employer Type: Large Corporation
Job Location: Goleta, California