Patent Agent – Large Corporation – Cambridge, Mass.

February 18, 2011- US - Northeast, Emp - Corporate (in-house), Work - Licensing / Other Corporate, Work - Patent Agent, Work - Patent Prosecution

Pegasystems Inc. is seeking a Patent Agent to assist Senior IP Counsel in providing IP thought leadership by strategically developing and maintaining company’s patent portfolio with an eye towards supporting the company’s business objectives.

Responsibilities:
• Work closely with Pegasystems’ technical, legal and business team members in the process of researching, generating and evaluating new patent ideas for the patent portfolio
• Assist with developing and implementing patent strategies
• Prepare and prosecute US and foreign patent applications, freedom to operate and validity evaluations, and technology related agreements
•Oversee and manage the work of outside patent and IP counsel
• Assist with researching competitor products/portfolios
• Assist with researching and evaluating potential patent acquisition targets
• Other responsibilities and key result areas will be assigned as required

Functional Expertise:
• Strong technical writing/software patent drafting skills (min. 10-15 patent applications in the software field)
• Passionate about, and have a good understanding (including current and historical knowledge of products, standards, and technical literature) of software technology and innovation in that field
• Superior English written and oral communication skills
• Strong research and analysis skills along with an interest in legal issues concerning patents
• Training or practical experience with patent classification systems and/or patent search tools (e.g., Innography, Thomson IP) is strongly desirable.
• Possesses the appropriate level of technical/functional expertise and knowledge
• Understands and applies procedures, regulations, and policies related to areas of specialized expertise
• Utilizes technology-based tools and processes
• Continuous learning and development
• Customer service orientation
• Results oriented

Behavioral and Interpersonal:
• Adaptability and Flexibility
• Listening
• Communication
• Role modeling
• Team work

Sphere of Influence:
Company-wide for all IP issues with a special focus on patents

Education and Experience Requirements:
Minimum Level of Education: Preferred registered patent attorney or agent with at least an undergraduate degree in Computer Science

Type of Experience and Minimum Number of Years:
2-3 years of software patent prosecution experience is required. Prior experience as a patent examiner and/or IP transactional experience is highly desirable

Travel Requirements:
Minimal, infrequent travel

Contact:
Please apply directly to michael.arasi@pega.com.

Additional Info:
Employer Type: Large Corporation
Job Location: Cambridge, Massachusetts

Director, Global Intellectual Property – Other – Piscatway, N.J.

February 8, 2011- US - MidAtlantic and South, - US - Northeast, Emp - Corporate (in-house), Tech - Any / Other, Tech - Biotech, Tech - Chemical / Pharma, Work - Licensing / Other Corporate

Sr. Patent Counsel – Large Corporation – Irvine, Calif.

February 7, 2011- US - Southwest, - US - West, Emp - Corporate (in-house), Tech - Any / Other, Work - Licensing / Other Corporate, Work - Patent Prosecution

Allergan is seeking a Senior Patent Counsel to work in Irvine, California. Position reports directly to Chief IP Counsel. Responsibilities will include advising the company on IP issues, supervising outside counsel, and developing and coordinating IP strategy for the company. This position works on a broad spectrum of IP issues, and specific duties include origination and prosecution of patents, domestic and international, patentability, infringement and validity opinions, patent oppositions, collaboration and licensing agreements, IP due diligence, IP related transactions, and litigation support.

Requirements:
• Minimum of 8 to 15 years of legal experience.
• Law degree from a superior law school and a chemistry, biology or other life science undergraduate degree.
• Large law firm training.
• Corporate experience.
• Member of a state bar.
• USPTO registration.
• Strong knowledge of US patent office procedures and practice.
• Experience managing legal and non legal staff.
• Substantial experience in domestic and foreign patent prosecution.
• Substantial experience in IP due diligence and IP related transactions.
• Exposure to a wide range of intellectual property matters in areas including patent origination and prosecution, opinions, licensing, IP due diligence, IP related transactions, international expertise, internal processes around intellectual property development, conflict resolution and intellectual property litigation.
• Strong background in pharmaceutical or biotech field.
• Member of the California State Bar preferred.
• Strong leadership and decision making skills desired.
• Superior negotiating skills desired.
• Ability to work with a great deal of autonomy desired.
• Strong communication skills desired.
• Interpersonal ability to inspire confidence among senior management and outside counsel.

Contact:
For consideration please apply online using the following link: http://allergan.taleo.net/careersection/usa_external/jobdetail.ftl?lang=en&job=110062&src=PA-10640.

Additional Info:
Employer Type: Large Corporation
Job Location: Irvine, CA

IP Attorney – Large Corporation – Atlanta, Ga.

February 1, 2011- US - MidAtlantic and South, Emp - Corporate (in-house), Tech - Any / Other, Tech - Electrical, Work - Licensing / Other Corporate, Work - Patent Litigation

Patent Attorney – Large Corporation – Boston, Mass.

January 27, 2011- US - Northeast, Emp - Corporate (in-house), Tech - Chemical / Pharma, Work - Licensing / Other Corporate, Work - Patent Prosecution

Patent Agent – Large Corporation – Irvine, Calif. (Updated)

January 26, 2011- US - Southwest, - US - West, Emp - Corporate (in-house), Tech - Biotech, Work - Licensing / Other Corporate, Work - Patent Agent

Patent Agent/Technology Specialist – Small Corporation – Lexington, Mass.

January 13, 2011- US - Northeast, Emp - Corporate (in-house), Tech - Biotech, Work - Patent Prosecution

Corporate Counsel / Senior Corporate Counsel – Large Corporation – Gaithersburg, Md.

December 15, 2010- US - MidAtlantic and South, Emp - Corporate (in-house), Tech - Any / Other, Tech - Biotech, Work - Licensing / Other Corporate, Work - Patent Litigation, Work - Patent Prosecution

MedImmune is seeking Corporate Counsel/Senior Corporate Counsel, Intellectual Property to work in its Gaithersburg, Md., headquarters.

Major Duties and Responsibilities:
• Manage all aspects of large intellectual property estates in several therapeutic areas including oncology, inflammatory and infectious disease; antibody and other polypeptide-based technologies
• Closely interact with Research & Development organizations, including senior management, to identify new inventions and devise strategies for patent protection, risk mitigation
• Work with in-house attorneys, patent agents, and with outside counsel in preparation and prosecution of patent applications
• Evaluate and monitor patent portfolios of third parties
• Manage small team of attorneys and/or patent agents
• Provide IP and technical analysis in support of patent litigations
• Review and analyze license agreements and other contracts

Other Skills/Abilities:
• High level of professionalism and motivation, ability to work independently
• Ability to manage multiple tasks and projects with rapidly changing priorities
• Outstanding legal skills, excellent attention to detail
• Effective oral and written communication skills
• Excellent interpersonal skills
• Computer skills (especially experience with databases)
• Effective management and leadership skill

Job Complexity:
Detailed and complex legan and technical analysis.

Supervision:
Some supervision, but much independence

Education:
• Attorney with a USPTO Reg. No.
• Ph.D. or M.S. with several years of laboratory experience

Experience:
• At least 5 years patent prosecution experience in the area of therapeutic biologics
• At least 2 years of management experience
• In-house corporate biotech experience preferred

Contact:
If you are interested in this position, please apply online at www.medimmune.com/careers and search for Req #02910.

MedImmune is an Equal Opportunity/Affirmative Action Employer and does not discriminate on the basis of race, color, religion, gender, age, national origin, disability, veteran status, or any other characteristic protected by federal, state or local law.

MedImmune does not accept non-solicited resumes or candidate submittals from search/recruiting agencies not already on MedImmune’s approved agency list. Unsolicited resumes or candidate information submitted to MedImmune by search/recruiting agencies not already on MedImmune’s approved agency list shall become the property of MedImmune and if the candidate is subsequently hired by MedImmune, MedImmune shall not owe any fee to the submitting agency.

Additional Info:
Employer Type: Large Corporation
Job Location: Gaithersburg, Maryland

My company shares my passion for helping to improve human health around the world.”

“This is My MedImmune.”

Those who join MedImmune feel a sense of ownership about their future. They thrive with a recognized leader in the biotechnology industry and the wholly-owned subsidiary of AstraZeneca plc.

Here, you will join passionate professionals who advance science, technology and medicine to develop products designed to help people live better lives. You will excel in an environment characterized by respect, integrity and growth opportunities…that encourages both individual contribution and collaborative entrepreneurial thinking. Our products and/or product candidates are designed to address areas of need in infection, oncology, respiratory disease and inflammation, cardiovascular/gastrointestinal disease and neuroscience. Explore a MedImmune career as we strive to better more lives, more often, around the world.

IP Specialist – Large Corporation – S.F. Bay Area (Emeryville, Calif.)

December 14, 2010- US - Silicon Valley & SF, - US - West, Emp - Corporate (in-house), Tech - Electrical, Work - Licensing / Other Corporate, Work - Patent Prosecution

Gracenote, Inc. is seeking a Patent Specialist to work in the San Francisco Bay Area. The Patent and Information Specialist will interface with the technical, business and legal groups of the Company and external service providers to facilitate the day-to-day activities involved in patent prosecution, be responsible for organization of technical documents and publications, and be a gatekeeper for document exchange in certain third party relationships.

This position will play a key role in developing, organizing, obtaining and maintaining the intellectual property portfolio of the Company.Gracenote is looking for an enthusiastic team player that works well in a team environment. Candidate must demonstrate excellent writing, analytical and communication skills. The successful candidate will have an educational background in electrical engineering or computer science, in-house or law firm experience in the preparation and prosecution of patent applications, freedom-to-operate, and validity and infringement analysis in the multimedia technology field. The successful candidate will also have the requisite technical qualifications to assist in the drafting of applications and responses to office actions. The position will involve working closely with scientists and management as well as with an external IP firm and consultants to secure intellectual property for inventions worldwide. The position requires drafting and helping prosecuting patent applications worldwide; patent and literature database searching; reviewing and evaluating new invention disclosures; coo! rdinating with outside counsel and communicating with inventors in preparation and prosecution of patent applications; conducting patentability assessments; and supporting intellectual property opinion work and landscaping efforts. Other key responsibilities include participating in due diligence with in-house and outside counsel to evaluate IP portfolios and technologies.

Responsibilities:
• Prepare, file and prosecute patent applications worldwide.
• Coordinate with and oversee outside counsel in the preparation and prosecution of patent applications.
• Interface with scientists/engineers to collect and organize invention disclosures, details and data for patent applications.
• Assist in the development of patent filing, claim construction, and prosecution process.
• Conduct patentability assessments.
• Search patent and open literature in complex areas of science, and provide reports on prior art, patent references, monitoring of competition, due diligence and freedom to operate.
• Interface with IP counsel (internal and external) and provide information for the preparation, filing and prosecution of patent applications, freedom-to-operate analyses, and guidance on technical matters
• Support intellectual property opinion work and landscaping efforts.
• Oversight and regulation of patent portfolio data management and status

Qualifications:
• 2-5 years of in-house or law firm experience in the preparation and prosecution of patent applications, freedom-to-operate, and validity and infringement analysis in the multimedia technology field.
• Undergraduate degree in electrical engineering or computer science
• Excellent writing, analytical and communication skills.
• Familiarity with scientific and intellectual property databases and use of the same.
• Ability to organize patent and technical literature data in the context of an internal electronic database, and maintain such a database.
• Working knowledge of the patent laws, regulations and patent practice in general.
• Organized, independent, detailed oriented, capable of working on multiple tasks.
• Enthusiastic and works well in a team environment. Proficient with Microsoft Office components (Word, Excel, PowerPoint, etc.).

Desirable:
• Graduate degree in electrical engineering or computer science Licensed to practice before the U.S. Patent and Trademark Office

Minimum Education:
B.S. in E.E. or C.S.

Ideal Education:
MS.

Contact:
Apply online by visiting: http://www.gracenote.com/careers.

Additional Info:
Employer Type: Large Corporation
Job Location: SF Bay Area (Emeryville, California)

Senior Patent Agent – Large Corporation – Broadview, Il.

December 6, 2010- US - Midwest, Emp - Corporate (in-house), Tech - Any / Other, Tech - Electrical, Tech - Mechanical, Work - Licensing / Other Corporate, Work - Patent Agent, Work - Patent Prosecution

Patent Litigation Attorney – Large Corporation – Dallas, Texas

November 19, 2010- US - Midwest, - US - Southwest, Emp - Corporate (in-house), Work - Licensing / Other Corporate, Work - Patent Litigation

Patent Counsel – Small Corporation – Austin, Texas

November 17, 2010- US - Southwest, - US - West, Emp - Corporate (in-house), Tech - Any / Other, Tech - Electrical, Tech - Mechanical, Work - Licensing / Other Corporate, Work - Patent Prosecution

Trademark Manager – Large Corporation – Southfield, Mich.

November 12, 2010- US - Midwest, Emp - Corporate (in-house), Tech - Any / Other, Work - Licensing / Other Corporate

Thomson Reuters is seeking a Manager, Trademark Services to be responsible for a series of services associated with the maintenance and monitoring phase of the IP lifecycle. Key areas of accountability include supervising and facilitating an effective and efficient work flow; aligning employee objectives with business expectations; analyzing and delivering operational metrics; identifying, driving and facilitating process improvements; and leveraging Thomson Reuters tools to coach, develop and mentor team members to perform at the highest level possible at all times.

The Manager, Trademark Services reports to the General Manager.

Areas of Responsibility:
• Provide direction, leadership and accountability for trademark docketers, including monitoring work flow; ensuring adherence to standard operating and quality assurance procedures; driving achievement of quality and timeliness metrics; and implementing changes to operating processes
• Ensure 100% on-time payment of trademark renewals as instructed by clients, securing proof of rights in advance of due-date
• Design and implement programs that provide a distinctive level of service to clients optimizing satisfaction, loyalty and market position
• Develop and enhance relationships with foreign associates and government trademark offices worldwide
• Contribute to the ongoing development of the internal payment processing system including identification, documentation and solution recommendation for functional and design requirements, and creation of comprehensive and successful testing scenarios
• Motivate team members to achieve high levels of performance, including identification of training needs; execution against development plans; application of control procedures resulting in permanent corrective action; facilitating the team’s ability to cope with change
• Identify, collaborate and communicate with colleagues at all levels, including development of implementation plans for IP Rules
• Support the sales process
• Set the strategic direction of the trademark services department

Qualifications:
• BA / BS required
• 5+ years of increasing responsibility managing trademark matters in a law firm or corporate legal department preferred
• Strong, working knowledge of IP industry, including familiarity with US, European and Madrid trademark rules
• 3+ years supervisory experience preferred
• 5+ years of increasing responsibility working with clients via telephone and e-mail required
• Lean Six Sigma Green Belt Certification preferred
• Recent experience developing continuous improvement initiatives including evaluation of current operations, data analysis and implementation of recommended solutions on time and within budget
• Record of success in creating programs that drive revenue and customer satisfaction; ability to interact effectively at multiple levels, in support of customer relationships; demonstrated self-confidence, particularly with client relationships
• Demonstrated ability to manage staff through leadership change with little documentation
• Proven track record as a hands-on leader who understands the urgency of meeting needs across multiple dimensions
• Demonstrated conflict management skills with the ability to build relationships with and influence all levels within an organization
• Energetic, self-starter with ability to break through historical barriers
• Excellent collaboration, communication and presentation skills; ability to effectively present information and respond to questions from groups of managers, clients, teammates and customers

Contact:
Apply by emailing Corby Manes at Corby.Manes@thomsonreuters.com.

Additional Info:
Employer Type: Large Corporation
Job Location: Southfield, Michigan

Patent Attorney – Small Corporation – San Mateo, Calif.

November 10, 2010- US - Silicon Valley & SF, - US - West, Emp - Corporate (in-house), Tech - Any / Other, Tech - Electrical, Tech - Mechanical, Work - Patent Prosecution

Patent Counsel – Large Corporation – Memphis, Tenn.

November 9, 2010- US - MidAtlantic and South, Emp - Corporate (in-house), Tech - Biotech, Work - Licensing / Other Corporate, Work - Patent Prosecution

Medtronic, Inc. is seeking a Patent Counsel (II) who develops and maintains company patent applications, trade secrets, trademarks, copyrights, licensing and research agreements, publications and intellectual property aspects of contracts and agreements. Prepares legal opinions and analysis of patents; reviews and drafts significant corporate legal documents. Evaluates the validity of competitors’ patents and potential company product infringement upon valid patents of competitors. Responsible for pre-patent filing review, providing legal advice to the company concerning the patent viability of its inventions and the advisability of filing patent applications covering the company’s inventions. Provides other general legal advice and represents the company in matters relating to intellectual property law. Requires undergraduate or graduate science degree and law school (LL.B. or J.D.) degree, and admission to practice in at least one state.

Responsibilities:
FUNCTIONING FACTORS
• Knowledge: Applies mastery of in-depth knowledge in one job family or broader expertise in most areas of a job function.

• Problem Solving: Develops solutions to complex problems that require the regular use of ingenuity and creativity. Ensures that solutions are consistent with organization objectives.

• Discretion / Latitude: Work is performed without appreciable direction. Exercises considerable latitude in determining deliverables of assignment. Completed work is reviewed from a relatively long-term perspective, for desired results. May provide guidance about work activities to colleagues.

• Impact: Contributes to defining the direction for new products, processes, standards, or operational plans based on business strategy with a significant impact on work group results. Failure to obtain results or erroneous decisions or recommendations would typically result in serious impact on customers and/or results and considerable expenditure of resources.

• Liaison: Frequent interaction with internal or external contacts at various organizational levels concerning ongoing operations or changes relating to processes or programs. Leads briefings with internal and external contacts.

• Adhere to the Medtronic Core Behaviors of Customer Focus, Candor, Trust and Respect, Courage, Accountability, and Passion to Win.

Basic Qualifications:
• A Juris Doctor from a recognized, accredited U.S. law school and licensed to practice in at least one state or the District of Columbia with the ability to ultimately be admitted in Tennessee; registered to practice before the U.S. Patent and Trademark Office.
• Must have a minimum of 7 years of related experience with a Bachelors degree in Biomedical, Electrical or Mechanical Engineering or related field.

• A Juris Doctor from a recognized, accredited U.S. law school and licensed to practice in at least one state or the District of Columbia with the ability to ultimately be admitted in Tennessee; registered to practice before the U.S. Patent and Trademark Office.
• Must have a minimum of 5 years of related experience with a Masters degree in Biomedical, Electrical or Mechanical Engineering or related field.

OTHER SKILLS and ABILITIES:
• Strong communication skills, both oral and written
• Good interpersonal skills
• Ability to work in a fast paced environment
• Ability to work well under pressure and maintain positive, enthusiastic attitude
• Eagerness to learn and expand responsibilities
• Ability to work effectively in a team environment and build strong working relationships.
• 10-20% travel required.
• Desired/Preferred Qualifications Bachelors/Masters Degree in Biomedical, Chemistry, Biology or related field highly preferred. Experience providing IP counsel with respect to regulatory filings is preferred.

Physical Job Requirements:
• The physical demands described here are representative of those that must be met by an employee to successfully perform the essential functions of this job. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.

While performing the duties of this job, the employee is regularly required to sit and talk or hear. The employee frequently is required to stand; walk; and use hands to finger, handle, or feel objects, tools, or controls. The employee is occasionally required to reach with hands and arms. The employee must occasionally lift and/or move up to 15 pounds. Specific vision abilities required by this job involve normal vision.

Contact:
Apply online by visiting: www.medtronic.com/careers

Additional Info:
Employer Type: Large Corporation
Job Location: Memphis, Tennessee

Senior Patent Attorney – Large Corporation – Tucson, Ariz.

November 9, 2010- US - Southwest, - US - West, Emp - Corporate (in-house), Tech - Biotech, Work - Patent Litigation, Work - Patent Prosecution

Ventana Medical Systems, a member of the Roche Group, is seeking a senior patent attorney. Coordinates the Ventana IP activities within one or more business areas. Secure protection for the companys intellectual property and minimize the risk associated with bringing new discoveries and innovation to the marketplace by ensuring respect for the valid intellectual property rights of third parties.

Is a recognized specialist in a complex field of law, provides expert legal services to one or more operating departments as complex legal assignments are completed. This position is for a senior attorney with substantial experience who can demonstrate increasing competence in applying complex legal skills and departmental practices, plus evidence of maturity and judgment to help analyze and solve legal problems and deal with clients and outsiders.

Essential Functions:
• Responsible for developing and implementing an IP strategy within one or more business areas.
• Act as the primary contact for Ventana IP issues within one or more business areas.
• Prepare, file and prosecute patent applications in the U.S. Patent Office in order to protect the companys investment in research and development.
• Prepare written opinions on issues of patentability, patent infringement, patent validity and freedom-to-operate in order to minimize the business risk associated with bringing new discoveries and innovation to the marketplace.
• Assist product development teams in designing products to avoid the valid patent claims of third parties in order to minimize the business risk associated with bringing new discoveries and innovation to the marketplace.
• Provide general counseling on IP issues to the relevant business area(s) including functional groups such as business management, marketing, research and development and manufacturing.
• Conduct trademark searching and opinions.

Requirements:
Formal Training/Education:
• Undergraduate degree in one of the following: life sciences/chemistry/chemical engineering/biotech; advanced degree in the Life Sciences is preferred.
• Doctor of Jurisprudence, licensed to practice law in one or more of the 50 states.
• Licensed to practice law before the US Patent and Trademark Office (USPTO).

Experience:
• At least twelve years experience in IP practice, including patent preparation and prosecution, licensing, trademark practice and client counseling.
• Experience in the patenting of in vitro diagnostic devices or pharmaceuticals.
• Experience with IP litigation matters.

Knowledge, Skills, and Abilities:
A demonstrated ability to establish and maintain open, candid and trusting work relationships.

Contact:
To apply please visit https://careers.ventanamed.com. Vacancy # IRC19598. Ventana is an equal opportunity employer. M/F/D/V

Additional Info:
Employer Type: Large Corporation
Job Location: Tucson, Arizona

Patent Attorney- Large Corporation – Clark, N.J.

November 8, 2010- US - MidAtlantic and South, Emp - Corporate (in-house), Tech - Chemical / Pharma, Work - Licensing / Other Corporate, Work - Patent Litigation, Work - Patent Prosecution

L’Oréal leads the world of beauty with renowned brands like L’Oreal Paris, Ralph Lauren, Maybelline, Garnier, Redken, Giorgio Armani and Lancôme; $18 billion in annual sales; 23 consecutive years of double-digit profit growth; and has been consecutively ranked by BusinessWeek as one of “The Best Places to Launch a Career.” We are looking for a patent attorney.

The Patent Attorney is responsible for ensuring that L'Oreal USA is applying for all applicable patents in the hair, skin, and makeup métiers, and that all applications / registrations are in compliance with the global organization's mission and goals.

Principal Accountabilities:
1. Review internal developments stemming from our research efforts, and performs patentability reviews on those developments.
2. Determines potential patentability of U.S. R&D inventions.
3. Prepares and files patent applications with the Patent Office.
4. Prosecutes the applications as necessary, including their foreign counterparts.
5. Monitors possibility of patent infringement of L'Oreal patents.
6. Assists in the management of patent litigations.
7. Leads and directs the work of up to (2) others in the department.
8. Conducts freedom-to-operate analyses to ensure L'Oreal is not infringing third-party IP rights
9. Drafts agreements / licenses relating to external IP transactions

Requirements:
• J.D. from accredited law school and B.S. in Chemistry or Chemical Engineering a must
• Minimum of 5 years of comprehensive experience in patent-related work, preferably in the Cosmetics / Personal Products, Chemical, and / or Pharmaceutical industries.
• Must be experienced with licensing / contract matters.
• Must demonstrate a full understanding of U.S. patent law, and knowledge of European patent law, including patentability, prosecution, validity, infringement and litigation. Strong background in drafting/filing of patents as well as prosecution experience is a must.
• Must be able to report to Senior Management on complex patent and other legal matters.
• Excellent communication (verbal &written), interpersonal, and computer skills.
• Ability to prepare concise and lucidly written memorandums
• Able to legally work in the USA on an ongoing basis without requiring assistance.
• No relocation is offered for this position.

We are an equal opportunity employer M/F/D/V.

Contact:
Apply online by visiting http://lorealusa.jobs/

Additional Info:
Employer Type: Large Corporation
Job Location: Clark, New Jersey

Patent Counsel – Large Corporation – Downers Grove, Ill. (Updated)

November 2, 2010- US - MidAtlantic and South, - US - Midwest, - US - Silicon Valley & SF, - US - Southwest, - US - West, Emp - Corporate (in-house), Tech - Electrical, Tech - Mechanical, Work - Licensing / Other Corporate, Work - Patent Prosecution

Patent Counsel – Large Corporation – San Diego, Calif.

October 23, 2010- US - Southwest, - US - West, Emp - Corporate (in-house), Tech - Biotech, Work - Licensing / Other Corporate, Work - Patent Litigation

Gen-Probe is currently seeking an experienced Patent Attorney to prepare and prosecute foreign and domestic patent applications and to assist with the development and implementation of patent, business and licensing strategies. This person will also work with outside counsel on various related matters.

Responsibilities:
• Prepare and prosecute patent applications concerning molecular diagnostic assays and related instrumentation; and to a lesser extent, manage the prosecution of patent applications being handled by outside counsel.
• Conduct freedom-to-operate analyses related to product developments.
• Review research disclosure statements from research staff. Review technical manuscripts, posters and other materials intended for public dissemination.
• Assist in the preparation and negotiation of agreements involving intellectual property, such as licenses.
• Work with outside counsel on matters such as due diligence, oppositions, patent interferences, opinions of counsel, and agreements.
• Prepare and present company-wide lectures on issues relating to intellectual property.
• Provide litigation support to the General Counsel and/or outside counsel as needed in patent-related litigation.

Related Business/Technical Skills, Knowledge, Abilities:
• Advanced knowledge and experience preparing and prosecuting patent applications.
• Prior experience in supporting the negotiation and documentation of licenses and other intellectual property agreements.
• Experience with patent-related litigation

Education and Experience Requirements:
• 5+ years hands-on experience as a working patent attorney in the life sciences industry, preferably related to molecular diagnostics and/or diagnostic instrument systems.
• Admission to practice before the US Patent & Trademark Office as a registered patent attorney required.
• Applicants must be qualified to practice law in the State of California or eligible to qualify.

Gen-Probe offers a dynamic and innovative work environment along with excellent benefits that include company sponsored medical/dental/vision benefits, stock options (NASDAQ:GPRO), bonus potential, 401(k) with company match, paid vacation/sick time /holidays, assistance with continuing education, on-site fitness center and our own Waterfall Café.

Contact:
We invite you to view our Career Video! Please apply online by visiting: http://www.genprobe.com/careers/opportunities.aspx. Local candidates preferred. No agencies please.

Additional Info:
Employer Type: Large Corporation
Job Location: San Diego, California

“The Power to Look Deeper”
Awarded the 2008 Grand Prize at the local Workplace Excellence Awards, Gen-Probe is a respected biotech employer of choice in San Diego and a global leader in the research, development, manufacturing and marketing of nucleic acid probe-based products used for the diagnosis of human diseases and for screening of donated human blood. We offer a state-of-the-art facility in a prime location with world-class benefits. We’re currently looking for team members who have “The Power to Look Deeper” in developing the best products, technologies and service.

Patent Attorney – Large Corporation – Seattle, Wash.

October 18, 2010Emp - Corporate (in-house), Tech - Biotech, Tech - Chemical / Pharma, Work - Patent Litigation, Work - Patent Prosecution

Gilead seeks a patent attorney to work in Seattle, Washington. The Patent Attorney will be responsible for drafting and managing global patent portfolios directed to Gilead's respiratory therapeutic area based in Seattle, WA. In addition to working on all aspects of patent prosecution, including drafting patent applications and responding to Office Actions, the position will work closely with business and R&D colleagues to monitor the progress of Gilead's in-house research, evaluate freedom to operate with respect to third party patent rights, evaluate potential in-licensing or acquisition opportunities and advise research groups on a variety of IP issues, including assessment of third party patent rights.

This is a senior level position that provides the successful candidate with the opportunity to work on a wide range of IP issues in a growth-oriented pharmaceutical company.

Responsibilities:

• Draft responses to US and foreign office actions

• 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

• Manage patent portfolios in collaborative relationships

Requirements:
• Juris Doctorate, admitted to at least one State Bar, and registered to practice before the USPTO.
• Bachelors/MSc degree in chemistry, or a chemistry-related subject such as medicinal chemistry; a Ph.D. and other academics will be considered.
• We expect a minimum 8 years total experience, 5 years of biological/chemical/ pharmaceutical patent prosecution experience, and 3 years of experience working in-house in the patent department of a pharmaceutical company.
• Excellent organizational, interpersonal and communication skills are essential, including the ability to fluently speak, write and understand English. The successful candidate will be given considerable responsibility, and the ability to work independently is essential.

Contact:
To apply, contact Terry Page at tpage@gilead.com.

Additional Info:
Employer Type: Large Corporation
Job Location: Seattle, Washington