Patent Attorney – Small Corporation – Northborough, Mass.

June 29, 2019- US - Northeast, Emp - Corporate (in-house), Tech - Chemical / Pharma, Work - Patent Litigation, Work - Patent Prosecution

Aspen Aerogels Inc. is seeking a Patent Attorney with at least 5 years of experience in patent preparation and prosecution to be based out of our Northborough, MA headquarters. The Patent Attorney will be responsible for helping the company articulate and implement optimum patent strategies; will be a critical member of the legal team supporting the innovation oriented technology company. Key attributes include a solid patent law background, self-driven and established success in patent portfolio creation and management in a collaborative environment.

The Patent Attorney’s primary responsibilities include:

Identify and articulate IP opportunities in the Company’s R&D, Process and Product Development and other business functions, and assist in implementing the IP strategy.
Perform prior art searches, articulate patentability, prepare, file and prosecute patent applications at the USPTO.
Identify IP issues and advise on appropriate responses to third party actions, including performing relevant FTO analyses.
Manage foreign patent and trademark procurement activities.
Effective use patent/trademark databases to navigate the IP work flow along with support staff.
Develop policies and procedures to ensure an appropriate IP protection in different business activities.

Education and Experience:

Bachelors degree in engineering or natural sciences (preferably in materials, chemistry or chemical engineering).
Masters degree is a plus, but not required.
A JD from a recognized US law school and an active State bar admission.
USPTO registration is required.
5+ years patent procurement experience in a law firm or in-house environment.
IP related transactional practice.
Experience managing foreign patent portfolio.
Exposure to trademark issues

The successful candidate will have:

An ability to articulate complex technical/legal analysis and arguments orally and in writing.
A flexible and proactive approach to problem solving.
An ability to thrive on challenge and react promptly and positively to a fast-paced work culture.
Current knowledge of substantive and procedural requirements for filings (including electronic) with the USPTO and PCT practice.
Strong interpersonal skills and an ability collaborate across the company and with outside and foreign counsel to produce tangible results.
Excellent organizational skills and ability to manage and drive projects and tasks with high attention to detail.
Must be able to work in a demanding environment with shifting priorities and deadlines.
Demonstrates high integrity and strong work ethic.

Aspen Aerogels, Inc. is an equal opportunity employer. We evaluate qualified applicants without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability, veteran status, and other legally protected characteristics. The EEO is the Law poster is available here: http://www.dol.gov/ofccp/regs/compliance/posters/pdf/eeopost.pdf.

Aspen Aerogels, Inc. is committed to working with and providing reasonable accommodations to individuals with disabilities. If you need a reasonable accommodation because of a disability for any part of the employment process, please send an e-mail to jlosordo@aerogel.com or call (508) 466-3111 and let us know the nature of your request and your contact information.

Contact
To apply, please visit this website and submit your resume and cover letter: https://www.aerogel.com/.

Additional Info
Employer Type: Small Corporation
Job Location: Northborough, Massachusetts

Aspen Aerogels is the global leader in aerogel technology. The company’s mission is to enable its customers and partners to shape their own strategies around the global megatrends of resource efficiency and sustainability. The company’s Cryogel® and Pyrogel® products are valued by the world’s largest energy infrastructure companies. The company’s Spaceloft® products provide building owners with industry-leading energy efficiency including options for a safe, non-combustible fire rating. The company’s strategy is to partner with world-class industry leaders to leverage its aerogel technology platform into additional markets. Headquartered in Northborough, Mass., Aspen Aerogels manufactures its products at its East Providence, R.I. facility.

Intellectual Property Manager – Small Corporation – Victor, N.Y.

June 24, 2019- US - Northeast, Emp - Corporate (in-house), Tech - Any / Other, Tech - Biotech, Work - Patent Prosecution, Work - Regulatory

LSI SOLUTIONS^® located in beautiful Victor, New York, is a dynamic and growing medical device company dedicated to advancing minimally invasive therapeutics through research, development, manufacturing, and marketing of minimally invasive surgical instruments. We are seeking an Intellectual Property Manager. This role supports Executive Team, Discovery, Surgical Science, and Engineering as needed. Manages the Intellectual Property Team and executes primary and strategic intellectual property (IP) activities. Activities are of a scheduled and unscheduled nature. Travel may be required.

Essential Functions:

Enhance, maintain, and advise on Company intellectual property portfolio, including patents (utility and design) and trade secrets;
Develop and apply a process to ensure that all patent, and trade secret aspects of intellectual property are being addressed in a strategic manner that is consistent with and based on the Company’s business plans and goals as communicated by the Company’s President and CEO, Vice Presidents and Directors;
Develop and maintain a coordinated IP and product roadmap from concepts through released products, while executing IP milestones in sync with appropriate events in a planned and controlled fashion;
Efficiently and effectively manage, develop, and train all employees assigned the IP group, including, but not limited to patent drafts people, paralegals, patent administrators, and other administrative staff;
Actively research and identify intellectual property potential for new Company technologies;
Perform due diligence and patent validity and infringement analyses on existing Company patents, and patents filed or acquired by the Company;
Recommend appropriate path regarding patentability, claims, prosecution, and amendments;
Efficiently research and analyze prior art;
Develop an IP landscape for the technology areas important to the Company. Identify and contribute towards possible areas for innovation opportunity;
Write abstracts, brief and detailed descriptions, summaries, and develop claims in accordance with best patent practices which are consistent with current patent case law and rules;
Advise pertinent staff regarding associated rules and regulations to adhere to in filing proceedings;
Prepare and file U.S. patent applications with the U.S. Patent and Trademark Office (USPTO);
Prepare and file international Patent Cooperation Treaty (PCT) patent applications with the U.S. Receiving Office;
Coordinate foreign patent filings and prosecution with foreign agents as required;
Screen and select foreign IP agents for working with the Company;
Communicate with the USPTO and relevant examiners and boards;
Analyze USPTO and PCT office actions and prepare & file appropriate responses and amendments to procure high quality and strategic patents;
Handle all Company patent application appeals in front of the USPTO Patent Trial and Appeal Board;

Job Description:

Advise on and coordinate all Company Post Grant Opposition Proceedings;
Debate with USPTO examiners to withdraw rejections of applications for patent claims;
Recommend and develop software and tools required to achieve goals;
Prepare defensive IP publications as necessary;
Perform “right-to-use” patent clearance searches as needed;
Develop efficient processes and systems to facilitate intellectual property filing and docket management;
Set up and coordinate the maintenance of an intellectual property database, including status of active patents or pending applications, office actions, maintenance milestones, and impending fees;
Develop, maintain, and effectively share statistics on filed patent applications as well as issued patents;
Coordinate workflow with internal and external service providers;
Organize and prioritize numerous tasks and complete them under time constraints in an efficient and cost-effective manner;
Interact professionally with clients, lawyers, and employees at all levels and provide information with ordinary courtesy and tact while safeguarding confidentiality;
Recommend best practices and implement procedures to ensure confidentiality;
Recommend best practices and implement procedures to maintain consistency and an active protective posture in regard to Company patents;
Directly influence IP policy, including non-disclosure and confidentiality requirements, documents, and procedures;
Regularly update knowledge of pertinent USPTO, PCT, and international rules and case law to keep skills up to date;
Attend executive and planning meetings as recommended by the President and Directors in order to gain exposure to aspects of the business which will drive IP planning and actions; and
Perform other related duties and projects as business needs require at direction of management.

Education and Experience:

Registered patent practitioner (patent agent preferred) with the USPTO, having a minimum of ten years of patent prosecution experience;
Experienced at successfully interfacing with business executives and incorporating business aspects into IP filings and plans;
Experienced at successfully advising business executives;
Experienced at successfully leading and mentoring a diverse team;
Practical engineering experience is a plus.
Bachelor’s degree in an engineering discipline;
Concentration in mechanical or biomedical engineering preferred; and
Coursework and/or understanding of human anatomy is a plus.

Knowledge, Skills, and Abilities:

Thorough knowledge of USPTO and PCT rules, guidelines, and processes;
Thorough knowledge of International and Regional filing timelines and rules necessary to work effectively with foreign counsel;
Demonstrated ability to successfully plan and manage activities for an IP team, including docketing, administrative, and technical/CAD related functions;• Proficient project manager;
Team oriented facilitator/mentor/worker;
Demonstrated technical proficiency;
Ability to quickly identify and understand novel mechanisms and/or processes;
Excellent communication skills (verbal and written);
Excellent persuasion and debate skills;
Excellent multi-tasking ability;
Customer-focused, goal-oriented self-starter
Advanced knowledge of computers and software (e.g. MS-Word, MS-Excel, MS-Access);
Expert at deciphering mechanical drawings; and
Proficiency with AutoCAD 2-D drafting software and/or AutoCAD Inventor is a plus.

Physical Demands and Work Environment:
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.

Sitting, standing, and/or walking for up to eight hours per day.
Frequently required to lift and/or carry from 1-5 lbs., occasionally 25-30 lbs.
Frequently required to push and/or pull from 1-2 lbs., occasionally 10-20 lbs.
Routine use of standard office equipment such as computers, phones, photocopiers, filing cabinets, and fax machines.
Occasionally required to stoop, kneel, crouch, and crawl.
Regularly required to talk and/or hear, see, see color, handle/reach, and perform repetitive motion.
Able to occasionally travel commercially.
By providing my electronic signature I can, with or without reasonable accommodation(s), perform the essential functions of this position.

Contact
To apply, please visit this link: https://www.lsisolutions.com/careers/.

Additional Info
Employer Type: Small Corporation
Job Location: Victor, New York

IP Associate Director & Corporate Counsel – Large Corporation – Ridgefield, Conn.

June 5, 2019- US - Northeast, Emp - Corporate (in-house), Tech - Chemical / Pharma, Work - Licensing / Other Corporate, Work - Patent Prosecution

Boehringer Ingelheim is seeking an IP Associate Director & Corporate Counsel. Provides legal services to Clients, typically at the Director level and below. Level of counseling may include drafting of legal documents and provision of legal counsel regarding the risks associated with a given business objective. Should have experience in practicing law in intellectual property and patents with the objective of gaining more in depth knowledge of an additional legal area as well as insight into practicing law within a corporate setting. Typically partners with more senior legal counsel in meeting and providing advice where there is a greater legal risk and ambiguity. The successful candidate will have experience preparing and prosecuting patents in the area of large molecule biopharmaceuticals.

As an employee of Boehringer Ingelheim, you will actively contribute to the discovery, development and delivery of our products to our patients and customers. Our global presence provides opportunity for all employees to collaborate internationally, offering visibility and opportunity to directly contribute to the companies' success. We realize that our strength and competitive advantage lie with our people. We support our employees in a number of ways to foster a healthy working environment, meaningful work, diversity and inclusion, mobility, networking and work-life balance. Our competitive compensation and benefit programs reflect Boehringer Ingelheim's high regard for our employees.

Duties & Responsibilities:
• Identify patentable inventions through regular interactions with internal R&D project teams, colleagues in legal and collaborators, including evaluating inventions and generating and executing on corresponding patent protection strategies.
• Prepare, for review by more senior lawyer when appropriate, patent applications and prosecution with USPTO, freedom-to-operate analyses, and opinions, as well as review IP provisions in contracts, including research, collaboration and licensing agreements.
• Understanding of federal and state laws, regulations and policies relating to US patent law; ability to interpret and apply such laws, regulations and policies to inform business activities.
• Review proposed publications and presentations for potential impact on patent portfolio.
• Influence clients by identifying and communicating to clients risks associated with day-to-day operational business activities, including training clients on applicable legal issues relating to US patent law.
• Partner with clients to proactively apply legal and regulatory framework to business activity by identifying business goals and developing alternative solutions to assist in the achievement of successful outcomes.
• Negotiate on behalf of (and sometimes partnering with) client to achieve solutions consistent with business objectives.
• Confer with other in-house and outside counsel where appropriate.
• Manage (either directly or indirectly) administrative assistants and other personnel within department.
• Keep current with of evolving legal, regulatory and business issues within lawyer’s expertise and client’s business environment.

Requirements:
• Juris Doctorate degree from an accredited law school; at least 2 years relevant legal experience; admission to at least one State bar.
• Registered to practice before the U.S. Patent & Trademark Office.
• B.S/M.S/Ph.D. or significant work experience in biology, immunology, biochemistry, or other life science related field.
• A demonstrated competency in the field of biotechnology patent law, including patent preparation and prosecution for large molecule biopharmaceuticals, in particular antibodies.
• Working knowledge of pharmaceutical chemistry is preferred.
• Excellent oral and written communication skills.
• Excellent organizational skills; demonstrates discretion and ability to maintain confidentiality of information.

Contact
To apply, please visit this link: https://tas-boehringer.taleo.net/careersection/global+template+career+section+28external29/jobdetail.ftl?job=196700&tz=GMT-04%3A00&tzname=America%2FNew_York.

Additional Info
Employer Type: Large Corporation
Job Location: Rigefield, Connecticut

Senior Patent Counsel – Large Corporation – Audubon, Pa.

May 31, 2019- US - Northeast, Emp - Corporate (in-house), Tech - Any / Other, Tech - Electrical, Work - Licensing / Other Corporate

Globus Medical is seeking a Senior Patent Counsel who will work on a wide variety of Intellectual Property matters within the Intellectual Property Department at Globus including: Product Clearance, Patent Filing & Prosecution, Patent Litigation, and Licensing / Due Diligence. This senior position will require working with and through product development, sales, marketing, finance, legal, and administrative groups. In addition, this individual will assist in planning, developing and implementing overall strategy for the IP department at Globus to meet agreed performance plans.

Responsibilities

Leadership: Create and execute strategic vision for Globus IP department including IP portfolio planning by area. Create and manage efficient processes for aggressive patent prosecution, clearances and other activities to assist Globus product development efforts.
Product Clearance: Responsible for timely clearance opinions for product development personnel to ensure timely completion of projects. Working with engineers and managers in product development early on in the development process and providing advice to ensure that the design pathway is clear of existing competitive intellectual property.
Patent Filing / Prosecution: Responsible for aggressive filing and prosecution of Globus patent portfolio to build significant intellectual property value from inventions. Also responsible for timely filing and approvals on trademarks and copyrights as required. The output of this group will be a steady increasing stream of issued patents and trademarks that will provide the foundation for having the best patent portfolio in the spinal industry.
Patent Litigation: Assisting with pending and future litigations. Work with VP and outside counsel in managing all phases of ongoing litigation. Anticipate and prepare for future potential competitive litigation.
Licensing: Assist in business development efforts of the company by providing input for the successful licensing or acquisition of intellectual property from surgeons, companies, and other entities.
Due Diligence: Assist management in IP due diligence activities for M&A transactions.
Adhere to the letter and spirit of the company Code of Conduct, the AdvaMed Code, MedTech Code, and all other company policies. Ensure Compliance with applicable governmental laws, rules, and regulations, both in the United States and internationally, by completing introductory and annual training and maintaining knowledge of compliance as it applies to your role.
Represent the company in a professional manner and uphold the highest standards of ethical business practices and socially responsible conduct in all interactions with other employees, customers, suppliers, and other third parties of Globus.

Qualifications

At least eight years of experience in product clearances, patent procurement and prosecution, and ancillary areas with growing responsibilities preferably in the medical device field. Litigation, litigation support, and licensing experience also desired.
Experience in managing other attorneys and staff desired.
Previous law firm and corporate in-house experience preferred.
Ability to work in a fast-paced environment. Multi-tasking abilities required for successful job completion.
Well organized, detail oriented and a team player capable of working in a deadline dictated environment.
Ability to adequately represent and reflect company philosophy as part of management team to customers, investors, regulatory agencies and industry peers.
JD, with electrical engineering undergraduate/graduate degree preferred.
However, experience with software, medical imaging, and electrical/electro-mechanical medical products with a different technical degree is acceptable as well.
Must have passed at least one state bar and the Patent Bar.
Ability and willingness to travel occasionally.

Globus Medical is an Equal Opportunity Employer. All qualified applicants will receive consideration for employment without regard to race, color, religion, sex or national origin.

Contact
Apply online by visiting our website: www.globusmedical.com/careers.

Additional Info
Employer Type: Large Corporation
Job Location: Audubon, Pennsylvania

Intellectual Property Counsel – Large Corporation – Worcester, Mass.

May 15, 2019- US - Northeast, Emp - Corporate (in-house), Intellectual Property, Work - Patent Litigation, Work - Patent Prosecution

The Legal department of Saint Gobain North America (SGNA) is looking for an Intellectual Property Counsel to join their team. The IP Counsel will be responsible for general counseling on IP matters including patent prosecution enforcement and clearance, as well as trademark and trade secret matters, while building and maintaining the patent portfolio for SGNA. This individual will interact with a wide variety of people from R&D engineers to senior business managers.

Patent Counsel – Large Corporation – San Francisco, Calif.

May 12, 2019- US - Silicon Valley & SF, - US - West, Emp - Corporate (in-house), Tech - Computer Science, Work - Patent Litigation, Work - Patent Prosecution

The Kudelski Group (the “Group”) is looking for a Patent Attorney to join the Group’s global Intellectual Property Business Unit (“IPBU”) in support the IPBU’s worldwide prosecution team. The Group’s patent portfolio reflects the Group’s long inventive history and supports an industry leading Intellectual Property Team. This position will interact directly with the Group’s product units and outside counsel to implement KIPI’s prosecution strategy on a world-wide basis. This experienced attorney will manage all facets of protecting the Group’s inventive activity to continue the Group’s tradition of innovation. A successful candidate will have experience working with inventors, drafting or supervising the drafting of patent applications, very strong communication skills, and strong organization skills. The candidate will rely on these skills to manage the process of capturing the Group’s inventive activity. This attorney needs to thrive in a complex, fast-paced, and dynamic business environment, and also enjoy collaboration and teamwork within the IPBU and with business partners.

Reports to: Vice President, Chief IP Counsel

Primary responsibilities:

Work with Group employees to develop and protect inventions.
Drive innovation and “blue sky” sessions in support of directed invention harvesting.
Select and work with outside counsel to manage the preparation of high value, globally enforceable patents consistent with IPBU asset development guidelines and budgets.
Review all office actions, foreign filing decisions, appeals, continuations, new filings, and optionally draft applications to ensure compliance with varying global patent prosecution and enforcement systems.
Support freedom to operate analyses, license business case development, and/or patent litigation actions as needed.
Assist in analysis of patents being considered for use in licensing, acquisition, or divestiture.
Counsel inventors and IPBU on decisions around securing patent protection.
Coordinate with IPBU to develop and implement IP strategies to fit the Group’s varied needs.
Oversee implementation and expansion of the Group’s inventor recognition program.
Assist in patent clearance and freedom to operate for Group business units and products.
Provide regular project updates to VP and IPBU.
Ensure Group maintains a “Best in Class” asset management process with excellent results.

Qualifications:

Experience, Education & Certification:
- Juris Doctor (or equivalent) from a top law school with a membership in good standing with at least one State Bar and/or equivalent in a foreign jurisdiction and licensed to practice before USPTO and/or EPO.
- Engineering or science-based degree is desirable; must be familiar with Group’s technology, e.g., cybersecurity, video content delivery, and video security (e.g., DRM, Conditional Access Systems).
- At least 4 years of IP management or related experience required (preferably a mix of in-house and law firm experience)
- A working understanding of global filing and enforcement requirements.
- Litigation support is beneficial
- Proficiency with MS Office Suite (Word, Excel, PowerPoint) required.
Essential Traits:
- Excellent communication skills, the ability to work with various levels of management, strong analytical skills, detail oriented, and the ability to successfully lead cross-functional teams to achieve identified objectives required.
- Strong organizational skills, e.g., maintaining attention to detail on multiple projects simultaneously, and the ability to adjust to changing priorities and deadlines.
- Ability and desire to work collaboratively on a team.
- Sound legal and business judgment.
- Self-starter with strong problem-solving skills.
- Capacity to proactively isolate and prioritize issues and to focus on implementing both top-level, strategic solutions as well as the day-to-day initiatives.
- Ability to quickly assimilate and understand complex situations and information, including highly technical information.
- Able to quickly establish credibility, respect and trust.
- Strong sense of ownership, integrity and courage of conscience.
Language Skills:
- English language fluency is necessary, French is beneficial.

Contact
To apply, please email us at: ryan.lunsford@nagra.com.

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

Patent Attorney – Large Corporation – Gaithersburg, Md.

May 10, 2019- US - MidAtlantic and South, Emp - Corporate (in-house), Tech - Chemical / Pharma, Work - Patent Prosecution

AstraZeneca is seeking a Patent Attorney to work in its Gaithersburg, Md., offices.

Main Duties and Responsibilities

Actively counsel members of Research & Development organizations to identify new inventions as well as devise and implement strategies for patent protection over extended drug development life cycle
Create and implement global strategic approaches toward building patent portfolios and providing value to business
Prepare and prosecute patent applications (US and ex-US) including effectively managing outside counsel as needed.
Manage all aspects of large intellectual property estates in AstraZeneca/MedImmune’s core and opportunistic therapeutic areas
Evaluate and monitor patent portfolios of third parties
Develop and communicate IP guidance to stakeholders across the business, including within R&D, Business Development, commercial, legal
Review and analyze license agreements and other contracts
Provide IP and technical analysis in support of patent litigations

Position Requirements:

At least 4 years life science patent prosecution experience with global portfolios, combined in-house and law firm experience preferred.

Education:

Licensed US Attorney, USPTO Registration Number
Ph.D. or equivalent, and/or several years of laboratory experience in relevant scientific area

Desirable Requirements:

Experience in the biotech and/or pharmaceutical industry
Experience of managing external service providers.
First-hand experience of IP-related litigation
High level of professionalism and motivation, ability to work independently
Ability to take initiative to complete tasks and manage risks
Ability to manage multiple tasks and projects with rapidly changing priorities
Outstanding organizational skills and attention to detail
Effective oral and written communication skills
Effective time management skills
Adaptable and versatile learner
Ability to be an enterprise leader for the organization

Contact
To apply, please visit this link: https://job-search.astrazeneca.com/job/gaithersburg/patent-attorney/7684/11489597.

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

Patent Counsel, Associate Director – Small Corporation – Boston, Mass.

April 17, 2019- US - Northeast, Emp - Corporate (in-house), Tech - Chemical / Pharma, Work - Licensing / Other Corporate, Work - Regulatory

Alexion is seeking a patent attorney to address a full scope of global biopharmaceutical patent issues. The attorney in this position will partner with clients and other attorneys across multiple functional areas to build, maintain, defend and enforce the company’s intellectual property interests. The work will include client counseling; patent preparation and prosecution; developing legal opinions with respect to patentability, validity and freedom to operate; supporting due diligence reviews; and intellectual property related transactional work.

Principal Responsibilities:

Provide IP support to clients within Research and Development, Business Development, Technical Operations and other functional areas through all phases of drug research, development and commercialization.
Build the company’s intellectual property portfolio through strategic patent preparation and prosecution.
Partner with other members of the company’s IP team to manage intellectual property risks within the company’s programs and pipeline, including performing freedom-to-operate analyses and preparing opinions with respect to patent infringement and validity.
Support intellectual property due diligence on strategic transactions and perform intellectual property related transactional work.
Support intellectual property litigation (offense and defense), partnering with outside counsel, other in-house counsel and clients to efficiently achieve successful outcomes.
Educate clients on important intellectual property issues and forge strong client relationships that leverage opportunities to identify, create and protect valuable intellectual property.
Cooperate with management and colleagues to develop, implement and execute policies and practices that drive a proactive, business oriented IP program.

Qualifications:

At least 4 years of patent attorney experience with reputable, highly rated law firms and/or life sciences companies.
Excellent biopharmacuetical patent preparation and prosecution skills, with experience in global patent prosecution.
Registration to practice before the United States Patent and Trademark Office.
Experience counseling clients in biopharmaceutical research and development programs.
Understanding of intellectual property case law, rules and regulations.
Ability to develop pragmatic, business-centric approaches for managing intellectual property risks.
Ability to identify, analyze and render legal advice on complex intellectual property issues.
A global business enterprise view, with recognition of the potential commercial implications of an intellectual property issue within a region or country.
Clear potential to establish professional credibility with clients by delivering clear, concise and accurate advice, including the appropriate level of detail and anticipation of follow-up questions.
Passion and commitment to the practice of law.
Proven record of high integrity.

Education:

J.D. from a highly respected law school.
Advanced degree, preferably Ph.D., in chemistry, biochemistry, molecular biology, biotechnology, pharmacology or another discipline relevant to biopharmaceutical drug research and development.

Contact
Apply online by visiting this link: https://jobs.alexion.com/job/9340290/patent-counsel-associate-director-boston-ma/

Additional Info
Employer Type: Small Corporation
Job Location: Boston, Massachusetts

Patent Agent – Small Corporation – Carlsbad, Calif.

March 3, 2019- US - West, Emp - Corporate (in-house), Tech - Computer Science, Tech - Electrical, Work - Patent Agent, Work - Patent Prosecution

Metawave is a technology company that seeks to revolutionize the future of autonomous vehicles and wireless communications. Our team is engineering disruptive technologies for next-generation 5G communications and autonomous vehicle sensing. We are looking for a highly motivated, dynamic and collaborative patent agent for our beautiful headquarters in Carlsbad. This is an opportunity to be a part of a small and growing team of world-class leaders in the next generation wireless and autonomous vehicle sensing industries, who are at the leading edge of the next wave of RF millimeter wave hardware, wireless applications, artificial intelligence, object detection, and machine learning. Metawave was founded in the iconic PARC campus in the heart of Silicon Valley. Our Carlsbad office is in close walking distance to the beach and has a fun and lively SoCal, start-up atmosphere.

Your Role:
Candidates must have excellent academic credentials, a willingness and ability to master complex technologies, and strong writing and communication skills. Candidate must be a confident self-starter, capable of working both on her/his own as well as part of teams. A broad background in many different aspects of IP is helpful, including prosecution, litigation, licensing, and/or transactions.

Responsibilities include:

Work closely with Engineering team to identify patentable inventions
Prepare and prosecute patent applications for Metawave core technologies
Actively develop and manage patent portfolios
Counsel technologists on protection of Intellectual Property
Work with foreign counsel to protect innovations worldwide
Collaborate with software and hardware teams to develop patent strategies for automotive radar and cellular communications
Perform other duties as necessary for completion of projects and achievement of goals

Qualifications:

M.S./Ph.D. in Electrical Engineering, Computer Science, or Physics
Patent and Trademark Office registration required
Ability to work in a fast-paced environment with technologists
Outstanding writing and analytical skills, and top academic credentials are essential
At least 5 years drafting and prosecuting high-quality, complex patent applications for major technology companies
Ability to perform prior art searches and freedom to operate analyses’
Writing samples and references required

Preferred:

Experience in RF systems, including radar and cellular
Experience in Artificial Intelligence and Machine Learning
At least 3 years of working experience in industry
For attorneys, at least one state bar registration
German and/or Japanese speakers a plus

Perks + Benefits:

Competitive salary package
Stock options
Full Healthcare Program (medical/dental/vision)
Full Insurance Program (Life, Short and Long-Term Disability)
401(k) plan
Free lunch & great snacks
Fitness Reimbursement
Flexible time off & paid holidays
Social events + happy hours + team parties

Contact
To apply, please email us at: careers@metawave.co.

Additional Info
Employer Type: Small Corporation
Job Location: Carlsbad, California

Patent Agent – Large Corporation – San Francisco, Calif.

February 19, 2019- US - Silicon Valley & SF, - US - West, Emp - Corporate (in-house), Tech - Computer Science, Work - Patent Agent, Work - Patent Prosecution

The Kudelski Group (the “Group”) is looking for a Registered U.S. Patent Agent with a strong technical background in the computer sciences and software technology to join the Kudelski Intellectual Property and Innovation (“KIPI”) team. The patent agent will work closely with KIPI’s patent attorneys to support KIPI in implementation of IP strategy for the Group and assist in worldwide protection and support of the Group’s IP and innovation. A successful candidate will have experience capturing inventions, drafting and prosecuting patent applications, and communicating with technical and business clients and partners. The patent agent needs to thrive in a complex, fast-paced, and dynamic business environment, and also enjoy collaboration and teamwork with fellow patent professionals and business partners.

Reports to: Senior Patent Counsel

Travel: 10%, domestic, possible international travel 1-2x year

Primary Responsibilities:

Develop a deep understanding of the Group’s various technologies (cybersecurity and video content management, security and delivery), market players, services, and providers.
Conduct innovation and invention disclosure sessions with inventors worldwide to drive innovation and capture inventions arising out of the Group’s businesses and technologies.
Assess invention disclosures and conduct prior art analysis to develop invention disclosures and select for submission to patent committee.
Participate in regular patent committee meetings to review invention disclosures and make patent operational decisions with technical leads and KIPI members serving on the committee.
Stay current with patent law changes and support development, maintenance, and education of best practices for US and worldwide patent systems.
Review and manage outside counsel following outside counsel guidelines and budget for preparation and prosecution of patent applications.
Manage office actions, foreign filing decisions, appeals, continuations, new filings, and occasionally draft applications to ensure compliance with varying global patent prosecution and enforcement systems.
Assist in implementing on the patent strategy for mitigating patent risk and leveraging the patent portfolio to meet business goals.
Participate in and drive processes for strategic and quality review of preparation and prosecution of patent applications.
Support case development for licensing and patent litigation in support of competitive threats and targets within the scope of IP strategy.
Assist in analysis of applications/patents being considered for use in licensing, acquisition, or divestiture.
Oversee implementation and expansion of inventor recognition program.
Ensure Group maintains a “Best in Class” asset management process with excellent results.

Essential Traits:

Self-starter who can work well as part of a cross-functional team based around the world.
Excellent communication skills, the ability to work with various levels of management, strong analytical skills, and detail oriented.
Strong organizational skills, e.g., maintaining attention to detail on multiple projects simultaneously, and the ability to adjust to changing priorities and deadlines.
Capacity to proactively isolate and prioritize issues and to focus on implementing both top-level, strategic solutions as well as the day-to-day initiatives.
Ability to quickly assimilate and understand complex situations and information, including highly technical information.
Able to quickly establish credibility, respect and trust with internal clients/stakeholders and external service providers and business partners.
Strong sense of ownership, integrity and courage of conscience.

Required Qualifications:

B.S. in Computer Science, Computer Engineering, Electrical Engineering.
Exposure and/or passion to learn the Group’s technologies including video content delivery, video security (e.g., DRM, conditional access), and cybersecurity.
Solid understanding of U.S. patent laws and USPTO procedures.
Proficiency with USPTO electronic systems (PAIR, PatFT, EFS Web).
Possess qualifications and desire to sit for the USPTO Patent Bar examination for registration as patent agent.
At least 1-2 years of patent preparation and prosecution experience of software applications.
Exposure to foreign patent laws and/or patent office systems.
Fluency in English language and excellent communication skills, particularly written communication skills.
Proficiency with MS Office Suite (Word, Excel, PowerPoint).
Experience conducting invention disclosure/harvesting/mining sessions with inventors.

Preferred Qualifications:

Advanced graduate degree in Computer Science, Computer Engineering, Electrical Engineering.
Solid technical knowledge, industry experience, and/or education in the Group’s technologies including video content delivery, video security (e.g., DRM, conditional access), and cybersecurity.
Registered or pending registration as patent agent with the USPTO.
At least 1-2 years of practice supervising and/or providing strategic guidance in the preparation and prosecution of applications in foreign jurisdictions, in particular with Europe jurisdictions.
Knowledge of foreign patent laws and/or patent office systems, preferably European patent laws and European Patent Office (EPO) procedures.
At least 3-4 years of patent preparation and prosecution experience of software applications, preferably experience involving the technologies aligned with the Group’s business.
At least 1 year of experience independently conducting invention disclosure/harvesting/mining sessions with inventors.
Experience assessing invention disclosures for patentability.
Experience conducting prior art analysis for patentability, and/or patent infringement or validity.
Fluency in French is beneficial.
Language Skills:
English language fluency is necessary; French is beneficial

Benefits:

Market competitive compensation package (salary + bonus)
401(k) + company match
Medical, dental, vision, life and disability insurance
Pre-tax benefit programs + other voluntary insurances
Robust online training opportunities
Generous time-off policies

Contact
To apply, please visit this link: https://careers.nagra.com/?page=advertisement_display&id=10854.

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

Patent Licensing Counsel – Large Corporation – Multiple Locations

February 11, 2019- Asia, - US - Silicon Valley & SF, - US - West, Emp - Corporate (in-house), Tech - Computer Science, Tech - Electrical, Tech - Mechanical, Work - Licensing / Other Corporate

Yangtze Memory Technologies Corporation (YMTC) is an integrated-device-manufacturing (IDM) memory company with a focus on the design, production, and sales of 3D NAND flash memory chips. YMTC's Intellectual Property Department (IP) is seeking a highly motivated patent licensing attorney. In this role, Counsel will help provide legal support for all our products and businesses across the globe. Counsel will manage patent assertions and patent licensing, advisement on all types of IP transactions, and due diligence for acquisitions.

Patent Litigation Counsel – Large Corporation – Multiple Locations

February 11, 2019- Asia, - US - Silicon Valley & SF, - US - West, Emp - Corporate (in-house), Tech - Electrical, Tech - Mechanical, Work - Patent Litigation

Yangtze Memory Technologies Corporation (YMTC) is an integrated-device-manufacturing (IDM) memory company with a focus on the design, production, and sales of 3D NAND flash memory chips. YMTC's Intellectual Property Department (IP) is seeking a highly motivated patent litigation attorney. In this role, Counsel will provide the critical support needed worldwide for all YMTC products and businesses. We are looking for a patent litigator with great judgment and communication skills, and a demonstrated ability to manage the day to day progress of patent cases. You will be a self-starter who can quickly learn YMTC's patent litigation docket and practices, identify and manage risks and exposures, and find strategic opportunities for resolution.

Trademark/Copyright/Trade Secret Counsel – Large Corporation – Multiple Locations

February 11, 2019- Asia, - US - Silicon Valley & SF, - US - West, Emp - Corporate (in-house), Work - Intellectual Property, Work - Trademark

I.P. Counsel – Large Corporation – Ipswich, Mass.

February 11, 2019- US - Northeast, Emp - Corporate (in-house), Tech - Biotech, Work - Patent Prosecution

New England Biolabs Inc. (NEB), a recognized leader in enzyme design and development, is seeking an IP Counsel who will join the Intellectual Property Group as a contributor to all Intellectual Property functions within the company.

Patent Prosecution Counsel – Large Corporation – Multiple Locations (Updated)

February 6, 2019- Asia, - US - Silicon Valley & SF, - US - West, Emp - Corporate (in-house), Tech - Electrical, Tech - Mechanical, Work - Patent Prosecution

Yangtze Memory Technologies Corporation (YMTC) is an integrated-device-manufacturing (IDM) memory company with a focus on the design, production, and sales of 3D NAND flash memory chips. YMTC's Intellectual Property Department (IP) is seeking a highly motivated patent attorney. In this role, Counsel will support the IP's efforts to build and maintain a high quality patent portfolio that furthers the goals of YMTC's dynamic business. More specifically, the successful candidate will be responsible for personally drafting and prosecuting strategic, high quality patent applications, while supporting the department in a number of other activities critical for its success.

Associate Director, I.P. (Trademarks, Copyright, and Trade Secrets) – Large Corporation – Tarrytown, N.Y.

January 31, 2019- US - Northeast, Emp - Corporate (in-house), Tech - Biotech, Tech - Chemical / Pharma

Regeneron Pharmaceuticals Inc. is seeking an intellectual property attorney at the Associate Director level to help in the development, protection, and management of Regeneron’s valuable intellectual property pertaining to trademarks, copyrights and trade secrets. Working directly and through supervision of outside counsel, the attorney will be responsible for overseeing Regeneron trademark and copyright portfolios, coordinating worldwide enforcement of Regeneron’s trademarks and copyrights, and be part of a coordinated team that to identifies and protects Regeneron trade secrets. The attorney will be required to develop close client relationships with Regeneron research, manufacturing, regulatory, and commercial groups.

The attorney will also advise on emerging legal issues, including monitoring and reviewing case law and legislative developments, and is expected to contribute to administrative and legal projects intended to develop an IP Department displaying the highest legal and ethical standards.

Known for its scientific and operational excellence, Regeneron is a leading science-based biopharmaceutical company that discovers, invents, develops, manufactures, and commercializes medicines for the treatment of serious medical conditions. Regeneron markets medicines for eye diseases, hypercholesterolemia, rheumatoid arthritis, atopic dermatitis and asthma, head and neck cancer, and a rare inflammatory condition and has product candidates in development in other areas of high unmet medical need.

Responsibilities:

Manage Regeneron worldwide trademark portfolio;
Supervise outside counsel in preparing and prosecuting global trademark applications relating to all aspects of commercial and patient educational activities;
Perform internal trademark searches and provide advice to Regeneron clients on third-party trademarks;
Negotiate trademark coexistence agreements;
Manage enforcement actions against third parties that look to misappropriate Regeneron’s name and reputation on products, websites and internet domain names, including UDRP actions;
Provide advice to commercial and regulatory clients concerning choosing and obtaining generic and brand names as part of drug approval process by FDA and other marketing authorities;
Manage internal requests to use copyrighted materials of third parties;
Respond to requests of third parties to use Regeneron copyrighted materials;
Manage education and monitoring activities in connection with Regeneron colleagues’ use of materials available using social media;
Participate in team responsible for identifying and protecting company trade secrets.

Requirements:

B.A./B.S. or Masters in the life sciences (e.g., molecular biology, genetics, cell biology, immunology or related disciplines) is required;
Juris Doctorate from an accredited law school;
Licensed to practice law in at least one state (member of the NY bar or eligible for in-house licensure in NY);
At least 5 years of experience at a top law firm and/or in-house department with a focus on trademarks;
Experience with trademark, copyright and trade secret issues, particularly those relevant to the biopharmaceutical or pharmaceutical fields;
Strong organizational skills and ability to manage multiple projects and competing priorities;
Experience investigating, researching, and providing general legal advice concerning a broad range of questions and circumstances pertaining to intellectual property that arise in a company’s day to day business activities to ensure that company personnel are aware of, and in compliance with, applicable laws and regulations;
Ability to manage a large and complex docket with minimal supervision;
Exceptional communication skills, including presentation, interpersonal, writing and conflict resolution.

This is an opportunity to join our select team that is already leading the way in the Pharmaceutical/Biotech industry. Apply today and learn more about Regeneron’s unwavering commitment to combining good science & good business.

To all agencies: Please, no phone calls or emails to any employee of Regeneron about this opening. All resumes submitted by search firms/employment agencies to any employee at Regeneron via-email, the internet or in any form and/or method will be deemed the sole property of Regeneron, unless such search firms/employment agencies were engaged by Regeneron for this position and a valid agreement with Regeneron is in place. In the event a candidate who was submitted outside of the Regeneron agency engagement process is hired, no fee or payment of any kind will be paid.

Regeneron is an equal opportunity employer and all qualified applicants will receive consideration for employment without regard to race, color, religion, sex, national origin, sexual orientation, gender identity, disability status, protected veteran status, or any other characteristic protected by law.

Contact
To apply, please visit this website: https://careers.regeneron.com/job/REGEA0026307685/Associate-Director-IP-Trademarks-Copyright-and-Trade-Secrets.

Additional Info
Employer Type: Large Corporation
Job Location: Tarrytown, New York

Known for its scientific and operational excellence, Regeneron is a leading science-based biopharmaceutical company that discovers, invents, develops, manufactures, and commercializes medicines for the treatment of serious medical conditions. Regeneron commercializes medicines for eye diseases, high LDL-cholesterol, atopic dermatitis and a rare inflammatory condition and has product candidates in development in other areas of high unmet medical need, including rheumatoid arthritis, asthma, pain, cancer and infectious diseases.

Patent Counsel – Large Corporation – Multiple Locations

January 16, 2019- US - MidAtlantic and South, - US - West, Emp - Corporate (in-house), Tech - Computer Science, Tech - Electrical, Tech - Mechanical, Work - Licensing / Other Corporate, Work - Patent Prosecution

HP Inc.’s Patent Development Group is seeking a highly motivated patent attorney to join its legal team. In this role, Counsel will support the Patent Development Group's efforts to build and maintain a high quality patent portfolio that furthers the goals of HP's dynamic business. More specifically, the successful candidate will be responsible for personally drafting and prosecuting strategic, high quality patent applications, while supporting the department in a number of other activities critical for its success.

This unique opportunity will offer significant promotional and rotational opportunities. Successful candidates begin their careers in the Patent Development group and personally design their career path based on their goals and interests. Future roles can include patent portfolio management in Patent Development, rotations to IP Transactions & Counseling or IP Sales & Licensing, and Director or VP level leadership roles.

Key Responsibilities:

Drafting patent applications and office action responses.
Managing patent applications throughout the patent lifecycle by working directly with HP's inventor community, personally drafting and prosecuting high quality patent applications for strategically important inventions, and interacting with worldwide patent offices to secure valuable patent coverage
Actively participating in HP's invention disclosure review process to help ensure that HP's best inventions are identified and patented
Analyzing pending patent applications to determine their value to HP and to formulate a global filing strategy
Assisting patent portfolio managers with analysis of HP's patent portfolio, including preparation of claim charts
Collaborating with engineers in invention mining sessions, patent scrubs, and patent education sessions
Actively engaging in training, knowledge sharing, and other career development opportunities to hone technical and legal abilities and prepare for promotional or rotational opportunities
Participating from time to time as a member of a cross functional team to provide support in licensing, litigation, or other matters

Education And Experience Required:

A B.S. degree and/or advanced degree in Electrical Engineering, Computer Engineering, Physics, or Computer Science
A J.D. degree from an accredited university and admission to a state bar
Admission to practice before the USPTO
1 to 7 years of experience preparing and prosecuting patent applications
Strong academic credentials
Preference for candidates who have personally drafted at least 10 patent applications
Ability to work with clients in a team-oriented partnership to help them arrive at elegant solutions to their problems
Flexibility to accept new and different challenges in a fast paced, high-tech environment
Ability to communicate effectively, both verbally and in writing
A positive attitude, creative spirit, passion for IP law, and strong motivation to excel

Contact
To apply, please visit this website: https://h30631.www3.hp.com/job/boise/patent-counsel/3544/9503540. Please attach a resume, cover letter, and a recent writing sample, such as a published patent application and/or published Office Action response.

Additional Info
Employer Type: Large Corporation
Job Location: Houston, Texas; Vancouver, Washington; or Boise, Idaho

Patent Counsel – Small Corporation – Washington, D.C.

January 12, 2019- US - MidAtlantic and South, Emp - Corporate (in-house), Tech - Computer Science, Tech - Electrical, Work - Admin, Work - Patent Litigation, Work - Patent Prosecution

Unified Patents is again growing its legal department, and seeks experienced, registered, patent attorneys. Applicants must have at least 3 years of law firm or other relevant experience at the Patent Trial and Appeal Board (PTAB) and post-grant petition (IPR, PGR, and CBM), reexamination, and other administrative drafting and litigation experience;

Applicants should have a degree in Electrical Engineering (EE) or Computer Science (SC), as well as experience with video codecs, coding, cryptography, compression, signals, wireless communications, or other algorithmic subject matter. Patent examination experience is a plus; clerking experience is a plus; familiarity with ongoing cases post-SAS Institutes is a plus. Must be willing to work within a team, work well independently, and enjoy writing and editing. Journal and filing experience a plus. Strong preference for candidates located in the Washington, DC area.

DUTIES

Managing patent office proceedings internally
Drafting, filing, and litigating patent office proceedings, e.g., inter partes reviews
Handling calls with decision makers
Preparing for, conducting depositions
Presenting at oral hearings
Drafting motions and briefs
Supporting senior attorneys with management of ongoing matters
Support docketing, e-filing, deposit account, budgeting, and other IP functions
Editing work product of colleagues, outside counsel
Amicus curiae drafting and support; comment drafting and support
Contract, licensing, and other legal support services
Legal writing, support, and other various legal duties

REQUIREMENTS

3 years of PTAB (drafting petitions, filing, litigating, deposition) experience
State and Patent Bar passage
Ability to work independently and in a team
Excellent English written and oral communication skills

PREFERRED

Patent Office examination experience
Algorithmic, codec, and other code-based subject matter experience
Appellate and /or Clerking experience
EE or CS undergraduate degree
Graduate Technical (MS, MA, or PhD) degree
Willing to work from DC strongly preferred

BENEFITS
Aggressive, competitive benefits, with generous vacation and paid-for health insurance; freedom to work from home when appropriate; maternity and paternity leave; and financial support for bar and further education.

Contact
To apply, please visit this website: https://unifiedpatents.workable.com/j/591C80324F. Please provide cover letter showing PTAB filing experience.

Additional Info
Employer Type: Small Corporation
Job Location: Washington, D.C.

Patent Attorney – Large Corporation – Worthington, Ohio

November 1, 2018- US - Midwest, Emp - Corporate (in-house), Work - Licensing / Other Corporate

Hyperion Materials & Technologies is seeking a Patent Attorney.

Senior IP Counsel – Small Corporation – Rockville, Md.

November 1, 2018- US - MidAtlantic and South, Emp - Corporate (in-house), Tech - Biotech, Tech - Computer Science, Tech - Mechanical, Work - Patent Prosecution

Meso Scale Diagnostics, LLC is seeking a Senior IP Counsel.

EXPERIENCE AND QUALIFICATIONS:

Juris Doctorate degree from an accredited law school and a current license to practice before a state bar is required.
Graduate degree in technical area, preferable in biotechnology or chemistry.
A minimum of 5 years of legal experience at either a law firm or an in-house position, preferably working with advanced biotechnology.
Admittance to practice before the U.S.P.T.O. is required.
Ability to travel when necessary (domestic and/or international).

DUTIES AND RESPONSIBILITIES:

Provide a high quality level of professional, cost effective, proactive and responsive legal services to internal clients in the area of intellectual property.
Manage the company’s patent portfolio, including soliciting and evaluating invention disclosures, conducting patentability investigations, filing, prosecuting, issuing and maintaining patent applications and patents domestically and internationally in coordination with and through managing outside counsel.
Where appropriate, enforce MSD’s intellectual property rights through investigation of competitors’ products and supporting negotiation of favorable intellectual property licenses and litigation.
Analyze third party claims alleging intellectual property infringement by MSD’s products or services, including conducting and/or managing infringement and validity investigations and supporting negotiation of favorable intellectual property licenses and defense of MSD in intellectual property litigation.
Provide support to legal transactional team by analyzing and commenting of IP terms of various agreements.
Provide legal advice on obtaining copyrights, protecting trade secrets and avoiding infringement of the copyrights and trade secrets of others.
Manage the trademark process at MSD, including the acquisition of trademarks, advising and training on mark selection and use, conducting right to use investigations, and filing, prosecuting, issuing and monitoring trademark applications and registrations in coordination with and through managing outside counsel.
Maintain up to date knowledge of the company’s technology.
Review company product literature, reports to customers and collaborators, and proposals to the government to ensure intellectual property in such disclosures is adequately protected.
Meet promised deadlines for rendering advice or preparing documents, and be available when called on by management and staff.
Proactively anticipate IP legal issues before they become problems by practicing preventive law and by early involvement.
Provide training and written guidelines on the acquisition and preservation of intellectual property rights.

Contact
To apply, please visit this website: https://rew12.ultipro.com/MES1002/jobboard/NewCandidateExt.aspx?__JobID=1239.

Additional Info
Employer Type: Small Corporation
Job Location: Rockville, Maryland