Facebookseeks a highly motivated, team player to serve as Patent Counsel. This position will help manage the patent portfolio activities for our technology areas and report to the Associate General Counsel, Patents.
You must have the ability to operate independently in a fast-paced environment and work proactively with various teams across the organization including Legal, Product and Engineering. This is a great opportunity to join a growing legal team and work on cutting edge issues in an exciting, fast-paced environment.
Responsibilities: • Manage patent portfolio related activities for multiple product/technology areas, including invention identification and harvesting, invention disclosure meetings, portfolio mining, patent application preparation and prosecution by outside patent counsel. • Work with legal, product and engineering teams to identify and protect patentable products, services and technologies • Understand Facebook’s strategic and competitive position and think at a high level about portfolio strategy • Train and educate product and engineering teams in intellectual property matters • Support patent licensing, acquisition and litigation activities
Requirements: • 6-10 years of patent prosecution experience in relevant area • In-house portfolio building/management experience preferred • Must be proactive, self-directed, detail oriented, organized and have exceptional oral and written communication skills • Strong understanding of web technologies, social products/technologies/platforms, mobile space • Experience with patent licensing, valuation and acquisition a plus • JD with excellent academic credentials • BS or MS in Computer Science or equivalent • State bar membership • Eligible to practice before the US Patent and Trademark Office
Chicago Board Options Exchange (CBOE), the largest U.S. options exchange and creator of listed options, continues to set the bar for options trading through product innovation, trading technology and investor education. We are looking for an Associate Intellectual Property Counsel.
Position Summary: Assist in protecting CBOE's intellectual property (IP) by providing legal support and litigation assistance relating primarily to patent, copyright, and trademark matters.
Duties and Responsibilities: • Performs a combination of the following duties according to departmental guidelines: • Prepare and prosecute patent applications before the U.S. Patent and Trademark Office (USPTO). • Prepare and prosecute trademark applications before the USPTO. • Register copyrights with the U.S. Copyright Office. • Perform and report on patentability and freedom-to-operate patent searches. • Attend meetings of staff and committees involved in matters having intellectual property aspects. • Assist in managing outside counsel work on IP litigation and other IP matters. • May work on IP licenses. • Assist in implementing IP related policies and processes. Advise and educate staff on IP legal issues. • Perform other duties as assigned.
Requirements: • 2-5 or more years’ experience as a practicing attorney in patent and other intellectual property matters. Experience in patent application preparation and prosecution. Experience in business method/computer art applications. • Licensed to practice in Illinois, member of the Illinois Bar, and registered to practice before the U.S. Patent & Trademark Office (USPTO).
Knowledge, Skills and Abilities
Working knowledge of: • Patent and intellectual property field's concepts, practices, and procedures. • General securities industry, financial markets and/or derivatives markets- preferred. • Intermediate level skills in: • Legal research and analysis, and electronic legal research software tools • MS Office software (Word, Excel, Outlook, and PowerPoint). VISIO is strongly preferred.
Ability to: • convey complex ideas or concepts clearly in written form; develop communications related to unique or non-recurring issues which effectively inform, influence or compel; tailor tone or style of writing in relation to needs of different audiences; evaluate documents and proofread/edit for structure, clarity, syntax, grammar, spelling and punctuation. • organize and prioritize tasks and work assignments; complete multiple tasks simultaneously with accuracy and quality; adjust to changes in priorities and situations; meet deadlines. • interact in a professional manner with internal and external contacts; use tact and diplomacy; maintain confidentiality; appropriately handle and communicate controversial or sensitive information. • work cooperatively in group situations; offer assistance and support to co-workers; balance team and individual responsibilities; exhibit objectivity and openness to others' views; give and welcome feedback. • organize and express ideas clearly and understandably when speaking to individuals or groups; use professional grammar and word choice; listen to others and respond appropriately. • evaluate, analyze, and summarize data and facts; establish logical connections; form sound decisions based on analysis.
Education: • Bachelors degree in computer science or electrical engineering (or equivalent work experience). JD degree.
Additional Info: Employer Type: Large Corporation Job Location: Chicago, Illinois
CBOE is committed to continue to develop innovative products, to deliver quality service and to enhance our trading technology. CBOE has developed a unique Hybrid market model - a composite of the most valuable aspects of screen-based and floor-based trading environments - which offers our customers greater liquidity and instantaneous point-and-click order execution, while still preserving the benefits of trading through open outcry.
The opportunity to work at an industry leader with a dynamic environment that offers technical challenges like no other is just one reason to choose CBOE.
At CBOE you'll find rewarding work as well as outstanding benefits, some of which include: a business casual dress environment, comprehensive medical and dental plans, tuition assistance, 401(k) plan with a $2 for $1 match and a transit voucher program for commuting expenses.
CBOE is conveniently located in the heart of Chicago's downtown financial district and easily accessible by public transportation and commuter train lines
Opportunity for an IP attorney to be part of a top notch in-house legal team that oversees all IP matters on behalf of ON Semiconductor. The position will focus on transactional matters and specifically include: • Drafting various agreements such as ASIC development agreements, technology transfer agreements, IP clauses in supply agreements, in-bound and out-bound licensing, joint development agreements, and NDAs • Client counseling on these various agreements • Freedom to operate patent opinion work • Trademark counseling and prosecution • IP diligence associated with M&A activity • IP litigation support as necessary
This position requires the ability to interact with a team of professionals on a daily basis. The successful candidate will demonstrate flexibility and be able to handle a variety of intellectual property law matters and have the ability to communicate effectively with technical and non-technical audiences.
Position Requirements: J. D. degree from an A.B.A. accredited law school. Candidate must be a member of a state bar and must also be admitted to practice before the U.S. Patent and Trademark Office with at least 3 years of experience as a patent attorney. The ideal candidate will have an electrical engineering, physics, or chemical engineering degree. Related semiconductor industry engineering experience is a significant plus as should be highlighted on your resume.
Monsanto’s Biotechnology Organization is seeking a highly motivated Patent Agent to join our Patent Scientist Team. In this role the candidate will primarily have patent preparation and prosecution responsibilities.
Key Business Accountabilities: • Draft new patent applications • Assist internal and external counsel with the prosecution of applications • Provide technical support for preparation of patent applications, patent and literature database searching, and review and evaluate new invention disclosures • Serve as a liaison between scientists and Monsanto’s legal teams
Core Business/Functional Skills and Education: • Bachelor of Science Degree in a life sciences field with at least 3 years of experience in the preparation and prosecution of patent applications and performing Freedom to Operate and Patentability Searches • Registered to practice with the United States Patent & Trademark Office (USPTO) • Proficient with the USPTO’s Electronic Filing System (EFS) and Public and Private PAIR systems • Strong familiarity with genomic sciences including gene structure, functional genomics, and bioinformatics • Able to clearly express complex scientific concepts in written and presentation form • Ability to work closely with diverse teams and diverse roles while managing competing priorities
Desired Experience: • Advanced Degree (MS or Ph D) in a life science preferred • Experience searching, aligning, and describing genetic elements including nucleotide, ribonucleotide, and peptide sequences • Working knowledge of international patent prosecution rules • Ability to interact with scientific teams to explain and advise regarding complex IP strategies, filings and landscapes within a particular scientific field
Contact: To view the complete job description for this exciting position and/or apply online to this opportunity please visit our website at jobs.monsanto.com/patentscientist. Patent Scientist – Req #: 00GY7.
We offer very competitive salaries and an extensive benefits package.
Monsanto is an equal opportunity employer. We value a diverse combination of ideas, perspectives and cultures. EEO/AA EMPLOYER M/F/D/V
Additional Info: Employer Type: Law Firm Job Location: St. Louis, Missouri
Monsanto has always embraced innovation and always focused on making a better world. You can see it in our groundbreaking technology and in our dynamic environment where your skills and your career can grow and develop. We know that every day, new ideas can come from anyone, anywhere. You’ll be respected, you’ll contribute to the bottom line and you’ll help farmers feed the world\
New England Biolabs, Inc., a recognized leader in enzyme design and development, is seeking a part-time Patent Attorney who will be responsible for assisting the Intellectual Property Counsel with drafting and prosecuting patent applications.
Primary Responsibilities: • Drafting and prosecuting patent applications. • Filing and prosecuting oppositions in the US and overseas and FTO opinions.
Required Qualifications: • Ph.D. in molecular biology or chemistry. • Admission to the Massachusetts bar. • Admission to the USPTO with at least 5 years preparation and prosecution of patents. • Familiarity with the new AIA rules.
Preferred Qualifications: • At least 3 years law firm experience. • Experience as an Examiner at the USPTO is highly desirable. • Familiarity with domestic and foreign filing requirements.
New England Biolabs, Inc. is an equal opportunity/affirmative action employer
Additional Info: Employer Type: Small Corporation Job Location: Ipswich, Massachusetts
New England Biolabs, Inc. (NEB) is a privately held biotechnology company with a worldwide reputation for providing quality reagents for the molecular biology market. NEB’s customers range from small academic laboratories to major research institutions to large industrial corporations. NEB has a strong research focus, and relies on the cooperative interaction of a motivated workforce for its success. NEB is located in a beautiful estate setting, LEED certified building north of Boston.
Oakley, a global leader in performance eyewear, apparel, footwear, and accessories is looking for a motivated patent paralegal with excellent credentials and a willingness to learn. Candidates who seek responsibility and enjoy working as part of a team at a cutting-edge company are encouraged to apply.
1. Position entails all phases of US and foreign patent preparation and prosecution. Emphasis is in design application preparation and handling of correspondence exchanged with the U.S. Patent and Trademark Office (USPTO) and our foreign patent agents. Responsibilities include: document preparation, filing, typing, copying, proofreading and projects as assigned; and maintaining patent files and personal docket, ensuring that all due dates are met and that the company's records are current.
2. Assist attorney in drafting, editing and electronically filing new design applications, prosecution documents and associated transmittal forms at the USPTO, including: responses to missing parts, restriction requirements, and office actions; recordation of assignments; information disclosure statements; and issue fee payments. Identify and resolve formal & semi-substantive patent issues prior to the granting of the US Patent, including a review of the Notice of Allowance & the file history to ensure that all necessary references have been cited to the USPTO; advise attorney of the next best course of action & necessary steps to be taken.
3. Assist attorney in preparing application documentation for foreign patent applications and transmitting instructions to our foreign agents.
QUALIFICATIONS
Education: High School Diploma or equivalent required. Four-year college degree with strong academic credentials preferred.
Experience (and other qualifications): Position requires knowledge of the detailed U.S. patent laws & the deadline requirements for various actions, and experience reviewing incoming US & foreign correspondence to confirm the accuracy of the deadline date provided by an IP docketing software system.
Must be able to follow instruction, prioritize workload, efficiently complete assignments in a timely manner, and be able to work independently but cohesively within a team environment. Successful candidate will possess knowledge and experience, superior attention to detail, and excellent organizational and oral and written communication skills.
Successful candidate should have 3 to 5+ years of overall patent prosecution experience including significant experience at a patent law firm preparing and e-filing new applications and prosecution correspondence with the USPTO; foreign filing experience, including drafting and forwarding correspondence to foreign agents; and maintaining a patent docket. Position requires knowledge of rules & requirements set forth by the USPTO. Experience in market clearance and due diligence, including the ability to conduct factual research using online search tools, is desired but not required. General purpose software proficiencies include Microsoft Word, PowerPoint, Outlook, Excel and Adobe Acrobat. Patent-specific software proficiencies include the U.S. Patent and Trademark Office's patent application information retrieval system (PAIR), electronic filing system, and electronic assignment recordation system. High School Diploma or equivalent required. Four-year college degree with strong academic credentials preferred.
The Boeing Companyis seeking a Patent Portfolio Manager (PPM) is the focal point of portfolio knowledge for Boeing in an assigned technology area, in this instance the Platform Systems & Subsystems (PSS) domain. The PPM serves as a focal for Boeing with deep knowledge of the PSS patent portfolio, supporting enterprise IP Strategy development, providing functional patent guidance to internal business units, supporting and providing patent infringement analysis as appropriate, mining the portfolio to identify patent and technology licensing opportunities, developing enterprise relationships, and performing as Lead for a team of enterprise experts to accomplish the above tasks. He or she will manage the portfolio and provide strategic guidance on global patent portfolio development including US and non-US filing and prosecution decisions, maintenance fee decisions and country patent portfolio strategy and sizing decisions and supporting the identification and protection of other Boeing intellectual property (IP) such as trade secrets.
In addition to educational and work experience requirements, at least 7 and preferably 10 or more years of hands-on patent preparation, prosecution, opposition and portfolio management experience is required. An electrical engineering background is preferred.
The anticipated work location will be in St. Louis, Seal Beach or Seattle. This position will involve occasional travel. A telecommuting work schedule may be available for one or more days each week.
RPXis seeking an experienced individual to contribute to the success of the Patent Analysis Department. In this role, the Patent Analyst, Software and Media will assess and quantify patent-based risk. This individual will use industry experience to evaluate patents for the purpose of providing patent intelligence to support Company initiatives, including defensive buying, acquisition syndication (for large portfolios), and advisory services. To be successful in the role, this person must possess a broad knowledge of software technology, spanning Internet, Digital Media, SaaS, Consumer, and Enterprise. The Patent Analyst, Software and Media reports directly to the Senior Director, Patent Analysis, and works closely with the Acquisitions, Client Development, Client Relations, and Corporate Development Departments and RPX clients.
Role: • Supports RPX’s business model by identifying meaningful patents for our clients and succinctly communicating those findings to help the Company make informed decisions by: o Reviewing patent claims and other materials to determine basis for possible infringement disputes o Exploring relevant market(s) to assess adoption of patent usage o Researching prior related disclosures/commercial efforts to assess novelty of invention o Identifying and locating written evidence for specific innovations that occurred prior to the filing of a patent o Coordinating with external subject matter and enforcement experts o Communicating findings to relevant internal and external clients
Education/Experience Required: • Bachelor’s degree in Computer Science, Computer Engineering, or related field • Minimum of 3 years’ experience in technical or engineering role in the software industry
Required Competencies: • Ability to identify the software domain(s) to which a patent claim relates • Knowledgeable about companies in software domains and the products produced by these companies • Ability to use critical thinking skills to catalog, match, and relate similar patents, portfolios, and technologies • Well-versed in the history of technical development and key innovation dates in various software areas • Results-oriented and service-minded with ability to develop and foster relationships with key stakeholders internally and externally • Willingness to adapt to the many changing requirements/needs of a fast-growing, young company • Collaborative work ethic and ability to work in a team-oriented culture • Ability to work with virtual, global teams • Excellent interpersonal, networking, and influencing skills • Motivated, self-directed, and proactive with a willingness to take on additional projects • Proven track record of excellence, ownership, and accountability • Confident personality supported by disciplined, logical thinking and fact-based, documented conclusions and opinions • Ability to demonstrate sound judgment and execute against deliverables under deadlines and competing priorities • Highly focused, organized, and detail-oriented • Excellent oral and written communications skills • Represents RPX in a manner consistent with its culture and values
Technical Skills • Strong familiarity with the following technology domains: o Web Services § E-commerce/Marketplaces § Search/Advertising § Cloud Services § Social Networking § Gaming o Digital Media § Encoding/Decoding § Content Distribution § DRM/Security § Content Sync and Storage § Video Conferencing o Software/SaaS § Platform/Operating System § Application Software § Enterprise Software (CRM, ERP, SCM)
• Strong proficiency with the Microsoft Office suite, including Word, Excel, PowerPoint, and Outlook
Wells Fargorecently created an Enterprise Wide Patent office to manage and build our Patents across the organization The Enterprise Patent Office will be a centralized organization accountable for progress and more intentionally orchestrated overall Intellectual Property approach for the Company. The IP Manager position will be part of a key enterprise initiative to better protect the Company as more of our services are transformed by new technology. Team will proactively partner with LOBs to create new IP assets, acquire patent portfolios, and to provide competitive intelligence. These positions will report to the Head of the Enterprise Patent Office.
These individuals will be responsible to increase patent filling for the lines of business (LOBs) and functional groups for which they have responsibility. The IP Manager will work with senior business leaders and product/process innovators to identify patent (and licensing) opportunities in the ideation stages of product and project formation. The IP Manager will conduct time-sensitive as well as ongoing research and scanning of the IP and competitive landscape in technology and market spaces which are priorities for his/her LOBs. The IP Manager will engage with LOB leadership and with Law Department colleagues to develop strategies which preserve freedom to operate and promote innovation. The IP Manager will also train partners in the LOB who will become IP champions within their groups.
• Engage regularly with LOB counterparts to know LOB priorities for business improvements and new initiatives. Understand LOB reliance on key vendors and how IP for product and process improvements can generate value for Wells Fargo. (IP Manager may serve multiple LOBs, and/or have responsibilities which cross LOB lines) • Educate LOB and other colleagues on Enterprise Patent Office resources and processes; • Research the IP landscape for those areas which are priorities for the LOB. Learn and master data base research tools, including monitoring alerts of new patent filings, and patent issuance. Research is both proactive and reactive. Synthesize and present findings effectively; • Write invention disclosures which will be generated and refined with the input of LOB or technology experts; • Promote innovation through recognition activities for LOB colleagues who submit invention disclosures, and by creating linkages across LOBs and with other innovation efforts in the Company. Conduct facilitated sessions as needed to generate and harvest ideas for potential patents; • Bring patent acquisition and licensing opportunities to the attention of LOB leadership. Lead the analysis of the quality and potential value of the patents or licensing opportunities. Coordinate negotiations with the LOB and Legal, and lead negotiations if appropriate; • Coordinate with LOBs, Legal Department, and other partners to respond to assertions of infringement by third-parties; • Produce monthly and quarterly progress reports which reflect the status and changes in patent and innovation activity;
Basic Qualifications: • 8+ years strategic planning experience.
Minimum Qualifications: • Demonstrated experience with workflows, technology, market trends and customer behavior; • Proven examples of earning credibility, being collaborative and influencing decisions with senior business leaders, technology partners, product managers and legal colleagues; • Track record and examples of making recommendations that were successfully implemented; • Demonstrated understanding of technology as it relates to computer architecture diagrams and functional specifications; • 8+ years demonstrated success with program and process management. This includes enterprise focused initiatives; • Demonstrated experience developing, coordinating and implementing strategic responses and solutions to enterprise requirements. This includes experience researching pro s and con s in order to develop a recommendation for licensing and or contract strategies; • Demonstrated analytical and critical thinking skills. This includes the ability to effectively question assumptions, identify root causes and recommend systemic solutions. Ability to see the big picture and solve for complex enterprise business issues, but still be in the details • Demonstrated relationship building with the ability to communicate business objectives and influence on strategy and opportunities. • Demonstrated track record and confidence to meet critical milestones and commitments under pressure • Demonstrated effective communication and facilitation skills
Preferred Skills: • Demonstrated understanding of financial services products • Specific understanding or experience with Wells Fargo products and services for one or more Lines of Business • Demonstrated knowledge of patent and license process (filing, defending, etc). This would include process, business and/or technology patents. • Demonstrated deep understanding or experience with negotiating licenses or contracts. • Bachelors and or Masters degree in a related technical and/or business domain
Wells Fargo is an Affirmative Action and Equal Opportunity Employer M/F/D/V
Additional Info: Employer Type: Large Corporation Job Location: Manager may be open to other locations within the domestic United States based on applicant experience.
Telesignis seeking an Intellectual Property Analyst will work with the Cofounder and Vice President on executing the companywide intellectual property strategy and overall portfolio management. This involves partnering with the product organization team to file patent applications on new technologies, manage existing applications and outstanding office actions, and manage issued patents and licenses portfolio.
This position empowers the patent analyst to have an immediate and direct impact on the success of the company with much room to grow and develop.
Responsibilities: • Draft and file complete provisional, non-provisional, continuation, continuation-in-part, and divisional patent applications with the USPTO • Translate innovative product specifications to full patent applications, complete with necessary figures and diagrams • Work with the product and engineering team on specifications and design of new products • Assist in the ongoing prosecution of patent applications often in conjunction with outside counsel • Evaluate company innovations and product development for patentability and financial worth • Create and update licensing agreements, and other IP related agreements and contracts
Requirements: • 2+ years of patent related experience with interest in innovative technology • Excellent verbal, written, presentation, and project management skills • Strong ability to prioritize and multi-task in a fast paced environment • Proficient in PowerPoint, Word, and Vizio (or similar program) • Attributes: Self-motivated, positive, problem solver, team player, accountable, reliable, consistent, strong work ethic, focused, and organized • Engineering, product development, and/or legal background a plus • Registered Patent Agent a plus
Perks: • Generous bonuses • Medical, dental, and vision health benefits • Work with an amazing, dedicated team
Contact: For more information or to submit your resume and cover letter for consideration, please contact careers@telesign.com.
Additional Info: Employer Type: Small Corporation Job Location: Marina Del Rey, California
TeleSign is an organization that is innovative, creative, has an outstanding reputation, and is a leader in authentication, priding itself on its global footprint and high profile customers. Credit for this goes to every one of our employees. Our benefits program is a reflection of the Company’s interest in the welfare of all who work here and is designed to allow our employees to focus on what they love most about life, at work and at home.
TeleSign invests first and foremost in our people and is alert to the factors that make up a quality workplace, knowing compensation and personal satisfaction gained from a job done well are only a few. We are passionate about what we do and we enjoy our fellow teammates. We recognize the growth potential that a career with TeleSign offers and we give our employees a highly competitive health and wellness program.
Cypress Semiconductorhas an exciting opportunity for a sharp and experienced patent agent to help grow their internal patent department at its San Jose headquarters in Silicon Valley. The agent will be primarily responsible for drafting and prosecuting patent applications in a wide variety of semiconductor-related technologies. Such responsibilities also include preparing and responding to office actions and other U.S. Patent and Trademark Office (USPTO) communications, promoting patent disclosures, participating in disclosure meetings, evaluating patentability of innovations, performing prior art searches, and working with both outside and inside counsel on various patent prosecution issues.
Job Specific Requirements Qualifications: • The ideal candidate will have at least a Bachelor of Science degree in electrical engineering or physics, registered to practice before the USPTO, and preferably have at least 4-5 years of extensive experience preparing, filing, and prosecuting both domestic and foreign patent applications. Practical experience with capacitive sensing/touchscreen products, memory, and/or universal serial bus (USB) technology is strongly preferred, but not required. The candidate must have persuasive writing skills, excellent communication skills, and strong academics. If you have the skills, experience, and desire to be part of a dynamic and growing team of patent professionals in a leading high technology company, we want to hear from you today.
Rambus, one of the world's premier technology licensing companies, is seeking a Patent Counsel. As a Patent Attorney at Rambus, you will focus on supporting the strategic patent portfolio development and licensing program of at least one of Rambus' businesses.
Specific duties include: • Assisting the management of one or more patent portfolio related to at least one of Rambus’ businesses. • Working with R&D planning teams to actively identify and develop patentable subject matter. • Interviewing inventors to proactively identify patentable subject matter. • Participating with engineers and business people in innovation workshops to generate patentable subject matter. • Working with business and marketing people to identify important technologies and strategic applications. • Conducting substantive review of disclosures and participating in disclosure review meetings. • Coordinating the preparation and prosecution of applications and critically reviewing materials prepared by outside counsel. • Advising internal business clients on IP-related issues, including in connection with licensing and M&A activities. • Proactively helping improve Rambus’ patent development programs and processes.
Requirements and Preferences: • BS or higher in Electrical Engineering is preferred for this position. • JD and registration to practice before the US Patent & Trademark Office are required. CA bar preferred. • Five or more years of experience in preparing and prosecuting domestic and foreign patent applications, including familiarity with continuation practice in both domestic and foreign jurisdictions. • Must be organized, work well with others, and be able to effectively communicate technical and legal issues. • Must be able to travel occasionally to support Rambus businesses outside the San Francisco Bay Area. • Experience in prosecuting patents relating to communications systems, high-speed serial interfaces and/or physical layer signaling is preferred. • Experience in supporting litigation, opinion preparation, product analysis, patent due diligence, and/or licensing experience preferred. • Circuit design work and related work experience a plus. • M&A transaction support experience a plus. • Prior in-house experience a plus.
Additional Info: Employer Type: Large Corporation Job Location: Sunnyvale, California
Rambus is the innovative technology solutions company that brings invention to market. Unleashing the intellectual power of our world-class engineers and scientists in a collaborative and synergistic way, Rambus invents, licenses and develops solutions that challenge and enable our customers to create the future. While best known for creating unsurpassed semiconductor memory architectures, Rambus is also developing world-changing products and services in security, advanced LED lighting and displays, and immersive mobile media.
Rambus was voted one of the Bay Area’s Top Workplaces based on surveys completed by employees. Workplace Dynamics compiles the list based purely on employee’s opinion of their employers. Over 4,000 organizations across America participated in the program.
Personal Audio LLCis seeking a Licensing Executive to handle multiple aspects of our licensing program. Responsibilities will include direct research and managing outside research resources to identify potential infringers and licensees. You will also need to analyze technical aspects of potential licensees' products, work on claim charts, and customize the licensing strategy to specific licensees.
You will work with directly with an experienced Senior Licensing Executive (based remotely) and will serve as second chair in licensing discussions. This is a full-time position that will be located in Texas—an office that you will help locate and set up, preferably in the Houston area. Some travel will be required.
The ideal candidate will have a software or CS undergraduate degree, an understanding of intellectual property, and a legal post graduate degree with 0-5 years of experience. You must be self-motivated and able to work in a remote office in an independent fashion. An attractive salary will be offered in addition to a significant results-based bonus.
Contact: Any applicants should send their resume to:
Personal Audio owns a set of fundamental patents in the portable audio space dating to 1996. The company prevailed against Apple at trial last summer and has since licensed seven other major firms. This is an excellent opportunity to work with a trial-tested set of patents and learn from experienced trial lawyers, licensing executives, and inventors/entrepreneurs.
BASF is seeking an IP Counsel to work in Wyandotte, Michigan. The IP Counsel is responsible for:
• IP Estate Management including IP generation, defense, maintenance, and enforcement primarily in the US. Knowledge of the America Invents Act is needed. An understanding of foreign patent law and familiarity with European patent law in particular is also required. The ability to advise clients on patent coverage is critical. • IP Transactions - including those relating to divestitures and acquisitions. Tasks include conducting public and confidential due diligence, undertaking IP analysis, negotiating IP matters, preparing and/or reviewing agreements, and participating in closings. The ability to perform well under tight time constraints, interact well with other BASF M&A team members especially commercial attorneys, and provide timely advice on any risks to the client is essential. Overseeing the integration of the acquired IP into BASF is also an important part of this position. • IP Agreements including licensing of technology and patents (inbound and outbound licenses), joint development agreements, research and development agreements, and cooperation agreements. A familiarity with US antitrust law relative to licensing is needed. The ability to advise clients on licensing options, patent exhaustion, and IP valuation is critical. • IP Litigation including trade secret and patent litigations. Conducting pre-filing analyses and advising the client on the cost benefit of a potential litigation is required. This position works with inhouse and outside litigation counsel to supports litigation activities. • IP Counseling including Freedom to Operate opinions for new products and processes, invalidity opinions relating to third party patents, landscape and third party patent searching and analysis. The ability to advise clients on any risks and options is critical. Initiating oppositions or other patent invalidity challenges may be needed.
This position will be located at BASF Corporation’s Wyandotte, Michigan site (metropolitan Detroit area). Travel as needed to client locations in North America, client business meetings, and BASF’s parent in Ludwigshafen, Germany will be required. This position reports to Senior IP Counsel who reports to the General Counsel. The ability to do pro bono work through BASF’s relationship with the Pro Bono Partnership is available.
QUALIFICATIONS: - BASF recognizes institutions of Higher Education which are accredited by the Council for Higher Education Accreditation or equivalent
• Bachelor’s degree in the chemical related arts such as chemistry, chemical engineering, materials, and materials engineering • Graduate degree in the chemical related arts is preferred • Registration to practice before the United States Patent and Trademark Office (USPTO) is required • License in at least one state, preferably Michigan or New Jersey, and a member in good standing with any mandatory CLE completed is required • Minimum 10 years of experience practicing before the USPTO • Self-starter who is proactive and takes initiative • Team player who can work well with other BASF patent attorneys, patent agents, support staff, and clients • Excellent organizational skills • Excellent communication skills including presentation skills and writing skills • High-level problem-solving skills to review and evaluate legal and/or business problems, and recommend most favorable alternatives • Familiarity with electronically filing documents with the USPTO is required • Knowledge of the USPTO’s Public and Private PAIR systems for checking the status of filed patent applications is required • The ability to use word processing to draft, revise, and finalize agreements with little to no administrative support is required • The ability to work in a matrix organization and interact with IP counterparts located in Europe is necessary
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.
Supervisory Responsibilities: • 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. USPTO registration. • 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.
SHFL entertainment 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.
Additional Info: 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.
AstraZeneca is seeking a Senior or Principal Patent Attorney.
As a Senior or Principal Patent Attorney at AstraZeneca, you’ll manage a broad IP portfolio across every phase of research and clinical development and advise stakeholders at the highest levels of our business. There are two vacancies which can be based in either Wilmington or Boston, USA – one for an attorney with experience of pharmaceuticals and another experienced in pharmaceutical device IP. In either role, you’ll be able to take advantage of the very best opportunities AstraZeneca has to offer as you enable the development of medicines that will improve the lives of people worldwide.
As a Senior or Principal Patent Attorney your main responsibilities will involve: • Managing a broad patent portfolio • Developing IP strategies • Handling substantive, transactional and defensive issues • Educating and advising a wide range of stakeholders • Influencing R&D management and business development
As a Senior or Principal Patent Attorney your skills and qualifications will ideally include: • A track record of successful pharmaceutical or pharmaceutical device patent work • An EPA or CPA qualification and extensive post-qualification experience • Patent Attorney with extensive experience • Experience of managing external providers • Strong scientific knowledge • Outstanding leadership skills
What we will be looking for in you: We’ll be looking for candidates with excellent communication skills at all levels and strong business acumen. A high level of organization is essential, as is a solid, client-facing approach and a willingness to take on increasing responsibility.
Additional Info: Employer Type: Large Corporation Job Location: Wilmington, Delaware
AstraZeneca – Health Connects Us All
As one of the world's leading pharmaceutical companies, our business is focused on providing innovative, effective medicines that make a real difference in important areas of healthcare. At AstraZeneca, innovation is about more than just research. We aim to stimulate continued creativity throughout our organization by maintaining a culture in which our people feel valued, energized and rewarded for their ideas and contribution to our success - ideas which can make a difference in all aspects of our business. And we support and encourage our people in discovering their own potential, through excellent learning and development opportunities that are available to them throughout their careers.
Due to continued domestic and international growth, Valspar is seeking a Trademark, Copyright and Software Licensing Attorney to support our expanding legal needs. Located at our corporate headquarters in downtown Minneapolis and reporting to the Chief Intellectual Property Counsel, you will:
• Manage global trademark activity across all segments of Valspar’s businesses including: o Developing and implementing global trade mark strategy; o Performing trademark prosecution and renewal activities; o Performing trademark clearance searches and opinions; and o Preparing written opinions, including freedom-to-operate opinions, in order to minimize the business risk associated with bringing new marks to the marketplace.
• Oversee all copyright law activity for the corporation.
• Oversee all advertising law activity for the corporation.
• Manage Valspar’s software licensing agreements, audits and disputes, working in conjunction with the corporate IT organization.
• Oversee global domain name registration, dispute resolution and enforcement including: o Acquiring necessary domains; o Handling UDRP dispute resolution matters; o Negotiating acquisitions of third-party URLs; and o Establishing take down notice policies, processes and related matters.
As the qualified candidate, you will: • Have attained your Juris Doctorate and be licensed to practice law in one or more of the 50 United States; • Have recently graduated or have upwards of five years legal experience (preferably in IP practice, including trade mark prosecution, opinion work, licensing, and client counseling); • Demonstrate excellent legal, analytical, writing and computer skills; • Be organized, creative, detail oriented, capable of working under pressure and on multiple tasks; • Demonstrate project management skills and show an ability to meet deadlines as required; • Demonstrate strong self-initiative, sense of urgency and customer relationship building skills; • Be enthusiastic with ability to engender client trust and confidence; • Have the ability to take a reasoned position and defend it in the face of opposition; • Have excellent listening, verbal and written communication skills; • Have a collaborative work style, with a strong ability to build relationships, gain credibility and partner with internal customers and co-workers; • Be able to present information clearly and concisely; and • Be proficient in Microsoft applications (e.g., Word, Excel, Outlook, PowerPoint)
Hollister Incorporatedis seeking a Patent Agent to be responsible for assisting the Hollister in-house IP Law team in developing and maintaining the Company’s patent portfolio in support of the Company's business objectives. The individual is responsible for aspects of the Company's patent procurement activities, working closely and communicating effectively with scientific, technical, legal and business team members in the process. The individual will review invention disclosure submissions, consult key stakeholders to determine the best filing strategy, prosecute and, where necessary, manage prosecution by outside patent counsel in support of that strategy. This individual will support the IP Law team and/or outside patent counsel in strategic counseling matters, including search and opinion work and enforcement matters. The individual will play an important role in monitoring competitive activity and patent filings, and will assist with oppositions of competitive patents and preparation of third-party observations as appropriate.
Responsibilities: • Assist with obtaining IP rights • Interface with outside patent counsel worldwide • Conduct patent research • Prepare and edit/revise patent applications and responses to office actions
Support the IP Law Function: • Support Director, Intellectual Property and the Hollister Law team generally with respect to patent litigation and administrative proceedings • Manage the scheduling, agendas, and materials for Intellectual Property Committee and Patent Review (outside counsel) meetings • Deliver meaningful training sessions for technical and non-technical associates regarding IP rights, laws, and procedures
Essential Functions of the Role: • Extensive use of Microsoft Office software (Word, Excel, Outlook & PowerPoint) and database management software. • Occasional international and domestic travel. • Frequent communication with outside attorneys/agents, as well as, with business units regarding intellectual property matters.
Qualifications: • Bachelor's degree and/or graduate degree in organic or polymer chemistry, chemical engineering, polymer science, materials science, or other relevant technical degree. • Registration before the US Patent and Trademark Office. • 5 or more years' experience working as a patent agent in a corporate law environment or law firm. • Familiarity with procedures for handling domestic and foreign intellectual property practice matters. • Self-motivated, creative, strong organizational skills with emphasis on attention to detail, and ability to maintain confidentiality. Possess excellent written and verbal communication skills.
Additional Info: Employer Type: Large Corporation Job Location: Libertyville, Illinois
For over 90 years, Hollister Incorporated has built a strong foundation of quality medical products, quality services, and quality employees - making a difference in the lives of those we serve. Hollister Incorporated stands strong: We are an independent and employee-owned company. Committed to our customers. Dedicated to our employees. Working towards the future with a long-term vision.
Our challenge at Hollister Incorporated is to find those who share this dedication of helping others. Those searching for a way to make a difference. To leave a legacy of achievement. Knowing it takes talent, teamwork, and sheer determination.
Hollister Incorporated is a company where dedicated professionals can channel their efforts in a worthwhile cause. A company where good work is rewarded. Where contributing selflessly is highly regarded. This growing global medical device company will make the journey...with you. So join us, and make a difference.
Gilead Sciences is seeking a Counsel II (Patent Preparation & Prosecution) to work in its Foster City, California headquarters. This position will report to a senior patent attorney of the Intellectual Property department and will be responsible for a relatively heavy patent docket with primary responsibilities of drafting and prosecuting global patent portfolios directed to at least one of Gilead's current therapeutic areas: anti-viral, respiratory, oncology/inflammation and cardiopulmonary. In addition to working on all aspects of patent application preparation and prosecution, the position will work closely with R&D to monitor the progress of Gilead's in-house research, evaluate freedom to operate with respect to third party patent rights, and advise research groups on a variety of IP issues, including patentability assessments and assessment of third party patent rights.
This is an individual contributor position that provides the successful candidate with the opportunity to work on a wide range of IP issues in a growth-oriented pharmaceutical company. The successful candidate should be able to independently identify all of the legal issues in their day-to-day activities and be able to identify many of the legal and business issues associated with increasingly complex matters and, in doing so, begin to develop expertise in specific areas of the law and contribute effectively to legal and cross functional projects.
Essential Duties and Job Functions: • Draft patent applications and their prosecution in the US and foreign patent offices. • Collaborate with outside US and foreign patent counsel handling patent prosecution matters including appeals. • Maintain a detailed understanding of products and technical developments through relationships within the Company and professional growth and development via seminars, workshops, and professional affiliations. • Conduct patentability reviews. • Conduct freedom-to-operate reviews • Review and assist in drafting nondisclosure, research, license and other agreements involving the use, transfer, or ownership of IP • Counsel scientists and management regarding IP portfolio and strategy • Provide IP support for in-licensing and acquisitions • Through analysis and application of legal guidelines, supports IP project representatives on cross-functional projects. • Responsible for independently researching routine issues with visibility to senior Company management with the ability to analyze and defend analysis. • Frequently interacts with other functions to optimize collaboration between legal and other functions. • May participate in briefings with more senior members within legal regarding the process for delivering against assigned tasks and responsibilities.
Knowledge, Experience and Skills: • Bachelors degree in chemistry, or a chemistry-related subject such as medicinal chemistry. A Ph.D. or M.Sc in chemistry, or a chemistry-related subject, is a plus. Other academics will be considered.
• Juris Doctorate, admitted to at least one State Bar, preferably California, with at least 5-8 years experience as an attorney with a law firm or in industry. • Registered before the USPTO with at least five (5) years of small molecule patent preparation and prosecution experience in the pharmaceutical industry • Experience in the pharmaceutical industry is preferred although experience in related industries will be considered.
Other: • This position requires demonstration of Gilead’s core values: Teamwork, Accountability, Excellence and Integrity. • Excellent interpersonal and communication skills are necessary, including the ability to fluently speak, write and understand English. The ability to work collaboratively and efficiently with others and the ability to work well with a variety of different personalities is absolutely critical to be successful in this position. • The successful candidate will be given considerable responsibility, and the ability to work independently is essential. • Ability to handle multiple tasks in a fast-paced environment is essential. Willingness to take initiative and be proactive; good people skills are a must. • Works collaboratively with other members of legal department as well as internal client departments. • Sets appropriate priorities with clients and delivers results within the established timelines. • Contributes to multidisciplinary and/or cross-functional projects and take responsibility for legal aspects of complex to moderately complex projects within the IP Legal team. • Develops solutions and solve problems with ongoing input and oversight from more senior members of the IP Legal team. • Demonstrate good judgment for completing assigned projects and for providing patent legal advice in an efficient and accurate manner. • The candidate must be proficient in MS Office-based applications. The ability to conduct computer-based prior art searches, and patent family searches, is a plus. • Travel Requirements: occasional business trips within the U.S. or abroad may be required. While occasional, reasonable requests for telecommuting will be accommodated, a regular out-of-office telecommute schedule is not Gilead’s policy and is not a viable option for this position.
Additional Info: Employer Type: Small Corporation Job Location: Foster City, California
Gilead Sciences is a biopharmaceutical company that discovers, develops and commercializes innovative therapeutics in areas of unmet medical need. The company's mission is to advance the care of patients suffering from life-threatening diseases worldwide. Headquartered in Foster City, California, Gilead has operations in North America, Europe, Asia and Australia.
Gilead Sciences is seeking a Corporate Counsel II — Patent Preparation & Prosecution to work in its Foster City, California headquarters. This position will report to a senior patent attorney of the Intellectual Property department and will be responsible for a relatively heavy patent docket with primary responsibilities of drafting and prosecuting global patent portfolios for inventions relating to anti-virals for HIV. Responsibilities also include working closely with R&D to monitor the progress of Gilead's in-house research, evaluating freedom to operate, advising research groups on patentability, reviewing third party patent rights, and considering regulatory matters relating to pharmaceuticals.
Essential Duties and Job Functions: The successful candidate will have the opportunity to work on a wide range of IP issues in a growth-oriented pharmaceutical company. The successful candidate should be able to independently identify legal and other issues potentially impacting the business. The ability to counsel research and business colleagues by providing clear advice is essential. The successful candidate is also expected to develop expertise in specific areas of the law and contribute effectively to legal and cross functional projects.
Essential Duties and Job Functions:
• Draft and prosecute patent applications in the US and foreign patent offices. • Collaborate with outside counsel handling patent prosecution matters. • Develop and maintain a detailed understanding of products and technical developments through relationships within Gilead
• Conduct patentability reviews. • Conduct freedom-to-operate reviews • Review and assist in drafting nondisclosure, research, license and other agreements involving the use, transfer, or ownership of IP
• Counsel scientists and management regarding IP portfolio and strategy
• Provide IP support for in-licensing and acquisitions
• Through analysis and application of legal guidelines, supports IP project representatives on cross-functional projects.
• Responsible for independently researching routine issues with visibility to senior management with the ability to analyze and defend analysis. • Frequently interacts with other functions to optimize collaboration between legal and other functions.
• May participate in briefings with more senior members within legal regarding the process for delivering against assigned tasks and responsibilities.
• Pursue professional growth and development via seminars, workshops, and professional affiliations.
Knowledge, Experience and Skills: • Bachelors degree in chemistry, or a chemistry-related subject such as medicinal chemistry. A Ph.D. or M.Sc in chemistry, or a chemistry-related subject, is a plus. Other academics will be considered. • Juris Doctorate, admitted to at least one State Bar, preferably California, with at least 5 years experience drafting and preparing pharmaceutical patent applications. • Registered before the USPTO. • Experience in related industries will be considered if the candidate can demonstrate knowledge of chemistry.
Other: • This position requires demonstration of Gilead’s core values: Teamwork, Accountability, Excellence and Integrity. • Excellent interpersonal and communication skills are necessary, including the ability to fluently speak, write and understand English. The ability to work collaboratively and efficiently with others and the ability to work well with a variety of different personalities is absolutely critical to be successful in this position. • The successful candidate will be given considerable responsibility, and the ability to work independently is essential. • Ability to handle multiple tasks in a fast-paced environment is essential. Willingness to take initiative and be proactive; good people skills are a must. • Works collaboratively with other members of legal department as well as internal client departments. • Sets appropriate priorities with clients and delivers results within the established timelines. • Contributes to multidisciplinary and/or cross-functional projects and take responsibility for legal aspects of complex to moderately complex projects within the IP Legal team. • Develops solutions and solve problems with ongoing input and oversight from more senior members of the IP Legal team. • Demonstrate good judgment for completing assigned projects and for providing patent legal advice in an efficient and accurate manner. • The candidate must be proficient in MS Office-based applications. The ability to conduct computer-based prior art searches, and patent family searches, is a plus. • Travel Requirements: occasional business trips within the U.S. or abroad may be required. While occasional, reasonable requests for telecommuting will be accommodated, a regular out-of-office telecommute schedule is not Gilead’s policy and is not a viable option for this position.
Additional Info: Employer Type: Large Corporation Job Location: Foster City, California
Gilead Sciences is a biopharmaceutical company that discovers, develops and commercializes innovative therapeutics in areas of unmet medical need. The company's mission is to advance the care of patients suffering from life-threatening diseases worldwide. Headquartered in Foster City, California, Gilead has operations in North America, Europe, Asia and Australia.