The Supreme Court has granted Microsoft's petition for a writ of certiorari and will consider whether patent law requires clear and convincing evidence of invalidity in order to invalidate an issued patent. Microsoft asks that the standard be lowered – at least for the situation where the evidence of invalidity was not considered by the patent office before the patent issued. The Supreme Court has not directly ruled on the issue. However, in KSR v. Teleflex, the Supreme Court did note that the "the rationale underlying the presumption — that the PTO, in its expertise, has approved the claim — seems much diminished" in cases where the patentee "fail[ed] to disclose" the key prior art to the PTO.
I expect that the court will agree that the statutory presumption of validity does not require a clear and convincing standard and that the standard should be lowered when a court is presented with evidence that is substantially different from that considered by the USPTO. Without explanation, Chief Justice Roberts has recused himself from this case – leaving eight justices to decide. At this point, I expect that all members of the court will agree that the standard should be lowered with some disagreement on the exact rule.
Clear and Convincing Evidence: Felony criminal cases require that prosecutors prove their case beyond a reasonable doubt. Most civil cases only require a preponderance of the evidence – often referred to as "more likely than not." Thus, in patent infringement cases, the patentee need only prove that it is more likely than not that the defendant infringed. However, the Federal Circuit has long required that invalidity defenses be proven with clear and convincing evidence. The clear and convincing standard is somewhere between a preponderance of the evidence and beyond a reasonable doubt and is sometimes referred to as "substantially more likely than not." Microsoft has not directly challenged the CAFC's rule of corroborative evidence that a single person's testimony is never sufficient to invalidate a patent.
i4i's case: In 2009, an Eastern District of Texas jury awarded $200 million + interest to i4i after finding that Microsoft willfully infringed the Canadian company's patent. Judge Davis subsequently added-on $40 million for willful infringement. The judge also issued an injunction ordering Microsoft to stop selling Word Products with the capability of using "custom XML." That injunction was stayed by the Federal Circuit pending appeal. On appeal, the Federal Circuit affirmed the lower court's findings of validity, willful infringement, enhanced damages, and permanent injunctive relief. In the meantime, the USPTO has concluded its reexamination of the i4i patent — confirming that the claims at issue are patentable. Microsoft filed a second reexamination request in August 2010 (shortly after it filed its petition to the Supreme Court). However, on November 24, 2010, the USPTO denied the request to begin a new reexamination – finding that the newly asserted prior art failed to raise a substantial new question of patentability (SNQ) as required by statute. Microsoft will likely appeal that denial. In addition, Microsoft apparently patched its software to prevent someone from using custom XML in Word in an effort to avoid the injunction and any further damages.
Microsoft has now moved-on to the Supreme Court — asking the high court to reject the "clear and convincing" evidence standard for proving a patent invalid. As Microsoft wrote in its petition for writ of certiorari, the question is "Whether the court of appeals erred in holding that Microsoft's invalidity defense must be proved by clear and convincing evidence" when the prior-art was not considered by the USPTO. This is essentially the same question that Microsoft raised in its 2008 petition in z4. That petition was withdrawn after the parties settled.
The Patent: i4i's asserted patent (U.S. Patent No. 5,787,449) covers a system for editing the metacodes of an HTML or XML document. The system uses a metacode map that is stored separately from the XML document and provides a menu of potential metacodes. The patent application was filed in 1994 and should remain in-force until 2015.
Microsoft's Invalidity Argument: Microsoft was not able to uncover any prior publication or patent that would invalidate the invention. However, the software giant argued at trial that i4i had sold an embodiment of the invention in the US more than one year prior to the 1994 patent application date. In particular, Microsoft argues that the invention was "embedded in a system called S4 - that the inventors of the ′449 Patent developed and sold to SEMI, a client of i4i's predecessor, over a year before applying for the ′449 Patent." That sale was not disclosed to the USPTO during the original prosecution and could not be presented during reexamination because reexaminations are limited to a review of prior art patents and publications. At the trial, the inventors (Vulpe and Owens) testified that the S4 system did not include a metacode map or separate the map from the marked-up document – two key features of their invention. Because the source-code for the 1993 custom software was no longer available, Microsoft primarily relied on testimony from a former i4i employee and upon written statements that Vulpe had made to investors and to the Canadian Government suggesting that the S4 software did separate metacode information.
The jury form asked "Did Microsoft prove by clear and convincing evidence that any of the listed claims of the '449 patent are invalid?" The jury answered "no." On appeal, the Federal Circuit held that the jury had sufficient evidence to rule that the patent was not anticipated by S4.
Importance of the Rule: A recent study conducted by Etan Chatlynne and published on Patently-O looked at all 119 Federal Circuit decisions on patent validity for the past several years. The study found that lowering the burden of proof would not have made any difference for 74% of those cases but might have made a difference in 26% of the cases. None of the decisions expressly stated that the result would be different if the standard had been reduced.
The clear and convincing standard probably has an important psychological impact in jury (and judicial) deliberations where the defendant's high burden for proving invalidity is contrasted with the plaintiff's lower burden for proving infringement.
Angiotech is seeking a Patent Paralegal to provide support to both internal and external intellectual property and other legal efforts. With over 1,300 dedicated employees spanning fourteen countries, Angiotech is a global specialty pharmaceutical and medical device company. Our tagline “redefining success” describes how Angiotech is striving to create novel medical solutions that elevate the standard of care and improve people's lives. We are seeking intelligent, progressive, and creative professionals to join our team.
Primary Duties and Responsibilities Include:
Manage the patent Intellectual Property (IP) portfolio including: • Acquiring patent prosecution & post-prosecution documents and saving them into an IP document database (Interwoven) • Entering and tracking patent file data and due dates in a docketing database (Cpi) • Writing and tracking correspondence pertaining to patent files • Preparing IP due date reports & case file documents for meetings with the responsible attorney/agent; following their review, transmitting prosecution decisions to outside counsel as needed.
Perform searches in US, PCT & other national IP databases and search engines and download documents as needed for managing an IP portfolio, discovery of competitive intelligence or other use; utilize Global IP database to prepare cost estimates for international filings.
Entry of data into Cpi database to: • track IP agreements for reports and compliance purposes • track products covered by the IP • track costs incurred in each case file
Track and docket events & due dates, & maintain files, of patent Oppositions and other litigation's as needed.
Prepare and electronically file IP applications and prosecution documents, assignments and formal documents with the USPTO. Coordinate filing of same with non-US national patent offices through foreign associates
Prepare documents and coordinate with foreign associates to do EP Validations and PCT Conversions; follow-up as needed to complete filings.
Prepare IP patent updates for Board of Directors reports & other corporate quarterly reports including updates to litigation's.
Education and Experience: • Bachelors degree and/or Paralegal certification • 5 years + experience as a Paralegal • Experience in Intellectual Property an asset.
Skills, Knowledge and Abilities: • Good oral and written communication skills. • Familiarity with database programs and document management systems • Strong grammar and writing skills. • Excellent time management and organizational skills. • A self starter and able to work independently and as part of an established team. • Ability to prioritize heavy workload and meet deadlines. • In-depth knowledge of Microsoft Office and experience using the internet.
The above statements are intended to describe the general nature and level of work being performed by most people assigned to this job. They re not intended to be an exhaustive list of all duties and responsibilities and requirements.
Angiotech is an Equal Opportunity Employer M/F/D/V
Additional Info: Employer Type: Other Job Location: Seattle, Washington
Pacific Northwest National Laboratory (PNNL), a nationally and internationally recognized research and development lab based in Washington State, is looking for a Sr. Patent Attorney to work in our Richland, Washington office (Job ID: 300347).
This is a great opportunity to work with a one-billion dollar government institution that is making a difference in advancing science and helping solve some of the world's toughest challenges in energy, environment and national security. PNNL was recently honored in Washington’s Best Places to Work competition, sponsored by the Puget Sound Journal of Business. We offer an array of benefits including tuition reimbursement plans, excellent health insurance and robust relocation packages.
The Senior Patent Attorney is expected to be an individual contributor with extensive experience and will be considered an expert in the practice of intellectual property law with a particular emphasis on patent law. While this position administratively reports through the Intellectual Property Legal Services Department (IPLS) Patent Group, the incumbent will be involved with and influence most aspects of the IPLS mission and objectives. The incumbent serves in a key IPLS role impacting work product delivery and quality to meet customer demand.
This position is responsible and accountable for participating in the day-to-day IP protection functions of Battelle and PNNL with particular emphasis on: (i) invention identification; and (ii) securing of rights for these inventions by understanding and reviewing appropriate reporting mechanisms and the preparation and prosecution of patent applications teaching and claiming the inventions. At least 200 inventions have been reported by PNNL staff for each of the last four years. The incumbent will be required to coordinate with a various interested organizations at PNNL, particularly Technology Commercialization, and elsewhere to determine whether a patent application should be filed to protect an invention. IPLS files approximately 75-100 patent applications, responds to approximately 250 Office Actions, and spends more than $2 million on patent application preparation and prosecution activities per year. Most PNNL patent applications have historically been filed by retained outside counsel. However, the last three years have seen a marked increase in patent application filings and prosecution actions using in-house patent agents and patent attorneys. The emphasis on in-house patent practice provides Battelle with an average savings of $5000 per patent application filing. An experienced patent practitioner is expected to be able to file a patent application of average complexity with less than 40 hours of charged labor.
This position is also responsible for providing advisory support and services to the IPLS IP Transactions Group. The required support activities include but are not limited to providing guidance, support and legal advice regarding licensing, Government contracts, copyright, and trademark activities. IP Transactions Group activities contribute to the receipt of more than $4 million in license revenues and $18 million in total consideration received by Battelle at PNNL in each of the last two years.
The incumbent is expected to provide independent legal advice regarding all forms of intellectual property (patents, copyrights, trademarks, trade secrets, etc.) directly to PNNL and Battelle officers, managers, and employees with little or no involvement or direct supervision by the Managing Patent Attorney or the IPLS Manager. This attorney has recognized patent law expertise including a command of the theory and principles pertinent thereto and has: (i) demonstrated the ability to work effectively with the United States Patent and Trademark Office without supervision; and (ii) the ability to mentor and train other patent practitioners. This position retains and assists with outside counsel management.
Responsibilities & Accountabilities: The Senior Patent Attorney will be expected to independently perform all aspects of a highly experienced patent attorney in a challenging and dynamic professional environment. This position would be roughly equivalent to an equity partner position in an intellectual property law firm. The incumbent will work on a variety of projects while addressing walk-in issues from management and staff. The Senior Patent Attorney will provide comprehensive legal advice and services at an expert level in all areas of intellectual property law including but not limited to patents, copyrights, trademark, and trade secrets. Legal advice and services rendered in these areas may be applied to activities such as perfecting rights in intellectual property of all forms, revenue producing transactions involving intellectual property, litigation, and client counseling.
The Senior Patent Attorney will be a trusted advisor to all levels of PNNL and Battelle management and staff. This position will provide legal advice and services for day-to-day activities, corporate strategic initiatives, and everything in between. The incumbent will also serve as a resource for IPLS staff requiring guidance and mentoring to deliver high value legal solutions to customers. The Senior Patent Attorney will have the ability to grasp, articulate, and frame legal advice and services within the context of and in alignment with PNNL and Battelle strategy and prudent risk thresholds. Accordingly, the Senior Patent Attorney must identify high risk issues and then work with PNNL and Battelle management and staff to develop and implement creative, cost effective legal solutions to mitigate risk. Failure to positively influence managerial and staff decision making to effectively mitigate known and foreseeable risks will most likely result in negative impacts to Battelle’s ability to accomplish major strategic initiatives, comply with 1830 Contract requirements, and meet fiscal goals and objectives.
The Senior Patent Attorney will face numerous challenges when representing Battelle’s intellectual property interests. Most notably, the Senior Patent Attorney will be challenged to:
• Provide cost effective, timely, and creative legal solutions to assist Battelle management and staff in the fulfillment of the PNNL mission; • Establish and maintain a positive rapport with all levels of PNNL and Battelle management and staff that will allow open communication and proactive legal action to minimize the potential for mission or project interruption and promote management and staff confidence in in-house legal resources; • Provide considered legal advice with little opportunity to conduct legal research to support the basis for a legal position; • Maintain currency with changes in intellectual property law and work with IPLS staff so they understand the implications of precedent on the conduct of their duties; • Communicate complex intellectual property legal concepts and principles in a manner that non-lawyers will understand and comply with; and • Maintain an understanding of intellectual property law and relevant technologies that will allow prompt if not immediate analysis of complex fact patterns and issues involving mixed questions of law and fact. • Independently assess and balance client priorities to meet customer demand for legal services in view of PNNL and Battelle long range goals and objectives in a timely and cost effective manner with little or no direct supervision.
Significant Roles of Senior Patent Attorney: Fulfilling the Senior Patent Attorney’s responsibilities to the intellectual property identification and protection process at a national laboratory requires a detailed knowledge of: (i) patent, copyright, and trademark law; and (ii) the requirements for technical information, inventions and the patent application process imposed by the U.S. Government (particularly the Department of Energy) through statutes, regulations, contracts, orders, and procedures. This position requires that the incumbent have the knowledge and credibility to retain and direct the activities of numerous outside counsel, Technology Commercialization management and staff, research management and staff, and Battelle management at PNNL and elsewhere.
The incumbent will be considered by Battelle management as an “expert” with regard to the handling and management of the patent process for inventions and Subject Inventions conceived or first actually reduced to practice by PNNL staff. The incumbent will have a comprehensive and thorough understanding of the theory and principles associated with the practice of intellectual property law. The incumbent will function as an individual contributor in matters relating to intellectual property law but may provide input to IPLS managerial issues including preparation of Staff Development Reports (SDRs) for IPLS staff.
Some of the specific activities that the Senior Patent Attorney will be responsible for include but are not limited to: (1) participating in the day-to-day Battelle intellectual property protection functions (with particular emphasis on invention identification, reporting and patent procurement) in a national laboratory environment; (2) mentoring and training patent attorneys and patent agents in the conduct of these functions; (3) providing the IPLS Manager and Managing Patent Attorney with performance feedback for IPLS staff SDR reviews; (4) working with Battelle senior management to develop and implement intellectual property protection strategies for PNNL and Battelle; (5) interacting with legal, technical, and senior level management at other Battelle facilities to assist with the design and implementation of corporate intellectual property strategy; (6) educating PNNL staff regarding intellectual property protection obligations and procedures; (7) providing advice and counsel to internal staff and external clients (with particular emphasis on the PNNL Technology Commercialization staff). This position plays a critical role in achieving the strategic intellectual property goals and objectives of Battelle and PNNL and is critical to secure protection of Battelle’s and PNNL’s intellectual property, ensure successful deployment of Battelle intellectual property, and comply with Battelle’s 1830 and 1831 contracts.
The overall job scope will include but will not be limited to: • Mentoring and training PNNL staff in the identification and procurement of invention reports and patents thereon; • Advice and counsel Battelle management in Columbus and other Battelle facilities regarding the rights of Battelle and the U.S. Government in intellectual property generated at a Battelle managed or co-managed laboratory; • Advice and counsel PNNL management and customers regarding rights in intellectual property generated at PNNL and the process for protecting such intellectual property; • Coordination with the PNNL Legal Department Manager on general legal issues including litigation that involve Battelle’s intellectual property; • Interaction and coordination with the Battelle Intellectual Property Legal Department in Columbus; • Retention and management of outside legal counsel; • Assist with the design and implementation of an intellectual property education program for PNNL management and staff; • Maintain communications and positive working relationships with Department of Energy legal staff including but not limited to the DOE-HQ Assistant General Counsel for Intellectual Property and the DOE-ORO and DOE-BSO patent attorneys that provide oversight for PNNL intellectual property and technology transfer issues; • Maintain communications and positive working relationships with oversight personnel at DOE-PNSO to promote their confidence in Battelle’s ability to manage PNNL in compliance with its obligations under the management and operating contract; • Maintain productive relationships with peers at other DOE national laboratories including national laboratories that are managed or co-managed by Battelle; • Mentor IPLS patent lawyers, patent agents, and legal coordinator; and • Individual contributions including but not limited to drafting and prosecuting domestic and foreign patent applications.
The Senior Patent Attorney is a key participant in the IPLS intellectual property identification and protection functions at PNNL. This includes mentoring and training patent attorneys, patent agents, legal coordinators (paralegals), support staff, and retained outside counsel. The incumbent will be responsible for providing the IPLS Manager and the Managing Patent Attorney with input for periodic and annual professional performance feedback and annual SDRs for IPLS staff.
This position retains and manages the work product of numerous retained outside firms in the procurement of patents in both the U.S. and foreign patent offices, both as to quality, timeliness, budget and the relationship/interaction with Battelle staff.
This position interacts with Department of Energy patent attorneys in Oak Ridge, Tennessee, San Francisco, California, and Washington, D.C. and with oversight personnel in the Pacific Northwest Site Office regarding the identification of IP and procurement of patents thereon, both in matters of policy and also implementation of policy/regulations/statutes.
This position works with Battelle corporate patent staff in Columbus to resolve intellectual property legal issues having relevance multiple Battelle corporate interests contribute to the development and implementation of corporate policy, assist with corporate issues that impact PNNL. This position routinely works with the PNNL Technology Commercialization staff to develop and implement practices and procedures for identification and protection of intellectual property at PNNL.
This position prepares and prosecutes domestic and foreign patent applications and serves as a mentor and trainer for other practitioners that need to develop preparation and prosecution skills.
Qualifications: • Undergraduate degree in a natural science or engineering discipline; • Advanced degree in a natural science or engineering discipline is preferred but not required; • Juris Doctorate from an ABA-accredited university; • Licensed to practice law and represent clients by a state bar association; • Licensed to practice law and represent clients before the United States Patent and Trademark Office; • At least 10 years of practice as a patent attorney in either a law firm or a corporate intellectual property law office; • Detailed understanding of and experience with practice before the United States Patent and Trademark Office; • Detailed understanding of the Patent Cooperation Treaty, and practice there under; • Intimate knowledge of and familiarity with statutes and regulations relating to intellectual property arising from U.S. Government contracts; • Knowledge of and experience with the U.S. Department of Energy management and operating contracts and regulations and policies regarding intellectual property arising from a DOE national laboratory; • Excellent written and oral communication skills; and • Ability to develop corporate policy and act upon such policy independently.
Minimum Requirements: Juris Doctorate plus 10 years of related experience. Bachelor’s degree in a natural science or engineering discipline.
Preferred Education: Advanced degree in a natural science or engineering discipline is preferred.
Other Information: Position requires ability to obtain multiple Security Clearances
Additional Info: Employer Type: Government Job Location: Richland, Washington
About Pacific Northwest National Laboratory Pacific Northwest National Laboratory is a Department of Energy laboratory, reporting to the Office of Science. PNNL advances the fundamental understanding of complex chemical, physical and biological systems and provides science-based solutions to some of the nation’s most pressing challenges in national security, energy and the environment. We accomplish this mission through the outstanding research and development activities of our staff, excellence in operations and high-value partnerships. PNNL has approximately 4,600 researchers and staff located at the main campus in Richland, Wash., the Sequim Marine Research Operations facility in Sequim, Wash., and at offices in Seattle, Wash., Portland, Ore., and Washington, D.C. Battelle, a global science and technology enterprise headquartered in Columbus, Ohio, manages the laboratory for DOE.
Landon IP is seeking a Patent Analyst to work in Alexandria, Virginia or Southfield, Michigan.
Description: • Strategically perform searches relating to patentability (novelty), validity, freedom-to-operate and infringement • Communicate effectively with customers in determining the scope of searches and draft informative reports that clarify and summarize search results • Maintain proficiency with commercial patent databases and other proprietary databases that disclose technical publications. • Conduct long-term patent landscape studies to identify trends in a technology field, deliver competitive intelligence and identify potential research and licensing opportunities • Perform Evidence-Of-Use studies by analyzing products currently used in the market that may be infringing on a patent of interest • Perform qualitative analysis of patents and patent portfolios from a legal, technical and business perspective
Job Requirements: Previous patent examining or patent searching experience preferred. Bachelors Degree and experience in one of the following areas:
• Electrical Engineering: Semiconductor structure and manufacture, solid state memory, nanotechnology devices and fabrication, electrical circuits and components.
• Electrical Communications: Cellular, mobile and wireless communications; networking; CDMA, OFDM, digital communications; computer engineering degree preferred; OR Video/audio encoding, image compression technologies, signal transmission and processing.
• Medical Devices: Surgery, prostheses, bio-electrical devices (MRI, ultrasound, etc.).
• Mechanical Engineering: Complex thermal-fluid systems, complex thermodynamics and refrigeration systems, complex fluid mechanics, and turbo-machinery; Complex HVAC systems, OR Petroleum – drilling and platforms, OR Green technologies including windmills, erosion control, rain routing, and waste management systems
• Chemistry: Polymer, plastic, petroleum refining and synthesis; Organic synthesis, medicinal formulations and synthesis.
• Biology/Biotechnology: DNA primers, viral replication assays, preservation of samples, PCR methods and expression vectors.
• Business Methods: E-Commerce, insurance services, banking/financial products (i.e., such as loans, savings accounts, checking accounts, sweep accounts, certificate of deposit accounts, FDIC regulations, internet banking), credit card/smart card technology, investment products and services (i.e. stocks, bonds, options, derivatives, mutual funds, money market funds)
• Computing: Cryptography including encryption, algorithms, hash functions, watermarking; Software including computer programming, compilers, firmware, video games, operating system, servers; Databases/File Management including indexing, memory allocation, file management applications, knowledge based systems, object database (OQL), OR Hardware including chips, graphics and media cards, memory (RAM/ROM), drives, I/O devices, buses; Computer Architecture including blocks, registers, flip-flops, MUX, DEMUX, clocks, logic implementation; Graphical User Interfaces (GUI) including graphics, interface design, software/hardware communication
• In-depth knowledge of technical literature in the area of subject matter expertise
• Highly skilled developing a search methodology and in conducting searches
• Strong time management skills and dependable in completing quality projects against deadlines
• Excellent interpersonal, oral and written communication skills
Contact: Please submit a resume and cover letter detailing your experience, and salary requirements to careers@landon-ip.com. Please reference the position title in your email subject line.
Additional Info: Employer Type: Other Job Location: Alexandria, Virginia or Southfield, Michigan
Landon IP serves the industry in all stages of the intellectual property lifecycle through the company’s five major business units – patent research, patent analysis and consulting, information retrieval and legal services, translations, and patent training through the prestigious and wholly owned subsidiary Patent Resources Group. Landon IP’s Patent Search Group literally wrote the book on patent searching, titled Patent Searching: Tools and Techniques published by Wiley & Sons. The company also teaches the Art & Science of Patent Searching through Patent Resources Group which is the industry leader in continued patent education. Landon IP serves over 10,000 customers worldwide including the United States Patent and Trademark Office which has relied upon Landon IP for patent searching since 2005.
The company prides itself on communication with employees, assisting employees in development of their knowledge and skills, and helping employees identify and create opportunities for growth within the company. The Patent Search Group offers an extensive initial training program in addition to long-term continued education for new employees. Landon IP also provides a casual and relaxed work environment that places the emphasis on delivering results through highly thoughtful work, delighting our customers and continuously exceeding their expectations.
Landon IP is seeking a Technical Team Director to lead, manage, and grow one of the five technical teams within the Patent Search Group at Landon IP. The five technical teams are Chemistry, Materials, and Life Sciences, Mechanical Engineering, Electrical Communications; Computing, and Electrical Engineering and Physical Sciences. The Director will be responsible for all project management, personnel management, customer relationship management, as well as provide business development support for the Technical Team. The Director is responsible for all facets of the search process from initial customer contact to final report delivery and follow-up.
Description: • Serve as key manager & leader in the company • Manage customer relationships • Manage workflow • Lead, manage, and grow analyst team • Generate new business to meet sales goals
Requirements: • Highly skilled in fast, accurate, and polished customer service. • Possesses an entrepreneurial, big-picture view of responsibilities. • Significant experience and familiarity with all types of patent searches. • Excellent writing, editing and verbal communications skills, as well as strong attention to detail. • Management experience is a plus. Desire to expand/learn management skills required, as well as a proven ability to communicate and interact well in all situations. • At least 5 years patent field experience. • Significant experience in one of the technical disciplines above. • Bachelor’s degree in technical area required. Graduate degree(s) a plus.
Contact: Please submit a resume and cover letter detailing your experience, and salary requirements to careers@landon-ip.com. Please reference the position title in your email subject line.
Additional Info: Employer Type: Other Job Location: Alexandria, Virginia
Landon IP serves the industry in all stages of the intellectual property lifecycle through the company’s five major business units – patent research, patent analysis and consulting, information retrieval and legal services, translations, and patent training through the prestigious and wholly owned subsidiary Patent Resources Group. Landon IP’s Patent Search Group literally wrote the book on patent searching, titled Patent Searching: Tools and Techniques published by Wiley & Sons. The company also teaches the Art & Science of Patent Searching through Patent Resources Group which is the industry leader in continued patent education. Landon IP serves over 10,000 customers worldwide including the United States Patent and Trademark Office which has relied upon Landon IP for patent searching since 2005.
The company prides itself on communication with employees, assisting employees in development of their knowledge and skills, and helping employees identify and create opportunities for growth within the company. The Patent Search Group offers an extensive initial training program in addition to long-term continued education for new employees. Landon IP also provides a casual and relaxed work environment that places the emphasis on delivering results through highly thoughtful work, delighting our customers and continuously exceeding their expectations.
AT&T seeks a patent litigation attorney. The attorney is expected to actively supervise outside counsel, participate in all aspects of trial preparation, including the development of litigation strategies, the marshalling of evidence and the selection of witnesses and experts. Our patent cases are located throughout the country and some travel is required. The position is in our Dallas office. The applicant must have at least 5 years patent litigation experience, and possess strong academic credentials, excellent communication, computer and organizational skills, as well as the ability to interact with all levels of management. A technical background or PTO admission is a plus, but not a requirement.
Contact: Apply to http://att.jobs and include law school transcript and two writing samples. AT&T views diversity and inclusion as essential to its culture and business success.
Additional Info: Employer Type: Large Corporation Job Location: Dallas, Texas
Wegman, Hessler and Vanderburg LPA (WHV) seeks an associate patent attorney with a minimum of five years experience in the mechanical arts. Candidates must be admitted before the USPTO and admitted or eligible for admission to the Bar of the State of Ohio. Trademark experience is a plus but is not essential.
Patent Attorney or Patent Agent to protect Intellectual Property created by Molecular Imprints, Inc. by drafting and prosecuting patent applications, and analyzing and developing the Molecular Imprints patent portfolio.
Essential Functions: 1. Protect and prosecute inventions and related intellectual property matters related to semiconductors, lithography, and systems engineering. 2. Work with company engineers and scientists to identify patentable intellectual property assets and educate engineers and scientists on current patent practice related to U.S. and foreign law. 3. Obtain disclosures of inventions for preparation of patent applications, and prosecution of subsequent patent applications. 4. Oversee prosecution of foreign cases, and in particular, prosecution under the PCT. Correspond with foreign associates in regards to foreign application prosecution. 5. The vast majority of the IP responsibilities are patent-related primarily in the area of patent preparation and prosecution, and analysis and development of the patent portfolio. In addition there may be work on opinions, assessments, and contracts relevant to intellectual property issues within the company. 6. Responsible for reporting on the status of multiple dynamically-changing patent dockets. 7. Initiate and interpret patentability searches. 8. Filing and prosecution of trademark applications.
Qualifications: Education 1. Bachelor’s Degree in technical field required; master’s degree/law degree preferred 2. Patent attorney is preferred 3. Knowledge of semiconductors, lithography, and systems engineering is beneficial
Experience At least 2+ years experience as patent agent or patent attorney Additional Info: Employer Type: Small Corporation Job Location: Austin, Texas
In recent years, the Board of Patent Appeals and Interferences (BPAI or Board) has seen a tremendous influx in the number of appeals being filed and a growing backlog of cases to be decided. In response, the Office is struggling for ways to streamline the appeal process without sacrificing decision quality.
The USPTO has now issued a new set of proposed rules for proceedings in Ex Parte Appeals before the Board. This new set of rules is a major complete revision of the BPAI rules that had been proposed in 2008 and should be seen as operating in parallel to ongoing changes-in-practice at the BPAI announced earlier in 2010.
Comments on the proposed rules should be submitted to BPAI.Rules@uspto.gov by January 14, 2011.
* * * * *
Particular proposed rule changes include:
The Board will take jurisdiction over appeals as soon as the reply brief is filed, and examiners would no longer have an opportunity to respond to a reply brief.
Once it takes jurisdiction, a procedural remand of the case would require Director's approval.
The Board will presume that all pending claims under rejection are being appealed.
The Rules will no longer require certain statements that simply reiterate information already of record. (e.g., claims appendix and statement on the grounds for rejection).
An examiner's answer that includes a rejection based on new evidence will be designated as a new ground of rejection, and applicants will be allowed to delay the appeal in order to await a decision on a petition seeking review of an examiner's failure to designate a rejection in the answer as a new ground of rejection prior to filing a reply brief.
Drinker Biddle & Reath LLPis seeking a candidate who has 2-4 years of patent agent or lawyer experience with a scientific background in the biotechnology field and having experience in the preparation and prosecution of patent applications before the U.S. Patent and Trademark office. Candidate should have a degree in one of the following biotechnology disciplines: molecular biology, microbiology, virology, immunology, biochemistry, or genetics, plus excellent writing skills, a capacity to manage multiple assignments concurrently, and the ability to produce top quality work with minimal supervision. An advanced degree is preferred.
Contact: Please submit resume, transcripts and technical writing sample to Maryellen Wyville Altieri, Director of Professional Recruitment, at maryellen.altieri@dbr.com. EOE.
Additional Info: Employer Type: Law Firm Job Location: Philadelphia, Pennsylvania
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
Ring Central, a fast-growing, well-funded venture backed SaaS telecommunications company is actively recruiting a patent attorney. This position will report to the General Counsel.
Responsibilities: • Preparation of new patent applications for the Company • Managing strategic development of the existing patent portfolio • Working with Company engineers and product managers to identify patentable inventions and generate invention disclosures • Understanding business needs and priorities to develop and implement an IP strategy • Evaluate and monitor third-party patent portfolios • Participating in negotiation of contracts involving IP • Analyses related to patent acquisition, litigation, licensing, freedom to operate, and infringement issues • Reviewing open source software licenses, advising on proper use and compliance
Requirements: • 4 + years overall patent prosecution experience, particularly in the software field • Software and telecommunications experience a must • Electrical engineering or computer science degree • Registered to practice with the U.S. Patent and Trademark Office • Must be a current member of the California State Bar • Trademark, litigation, and/or re-examination experience a plus
The Washington, D.C. office of Morgan Lewis, an international law firm with nearly 1,300 attorneys, is seeking to hire highly motivated staff associates and patent agents with a minimum of 3 years of patent prosecution experience to join its diverse Intellectual Property Patent Practice in Washington, DC. Undergraduate degree in Electrical Engineering, Physics, or Computer Science required. Experience in patent prosecution in communications technology, semiconductors, LEDs, and/or software is preferred. Significant engineering experience as well as advanced degrees will be recognized. Candidates should have strong academic credentials and excellent writing skills. We value collegiality and diversity among our lawyers and seek to make the practice both professionally and personally rewarding. Please note this is a nonpartnership track.
The Washington, D.C. office of Morgan Lewis, an international law firm with nearly 1,300 attorneys, is seeking to hire highly motivated, entry- to junior-level associates to join its diverse Intellectual Property Patent Practice in Washington, DC. Undergraduate degree in Electrical Engineering, Physics, or Computer Science required. Experience in patent litigation, counseling, and prosecution preferred. Credit given for significant engineering experience as well as advanced degrees. Candidates should have strong academic credentials and excellent writing skills. We value collegiality and diversity among our lawyers and seek to make the practice both professionally and personally rewarding.
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.
Or
• 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.
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
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.
Marjama Muldoon Blasiak & Sullivan LLP, a Central New York intellectual property law firm, has immediate openings for a Patent Attorney or Patent Agent.
Qualifications: Candidates must have a minimum one to five years experience in patent prosecution and be registered to practice before the USPTO. Qualified candidates preferably have a broad range of experience with developing, integrating and employing computer science technology and should have substantial knowledge of interface standards, such as communication networks and protocols (including Transport Layer, Network Layer and Link Layer protocols), hardware standards, operating system internals, databases, information security, software development tools, languages and other Web related components.
The firm's growing intellectual property practice focuses on patent and trademark prosecution as well as litigation of disputes for clients that include regional and national Fortune 100 companies. In offering a generous compensation package, the firm seeks to attract highly qualified candidates interested in developing a sophisticated law practice while maintaining a healthy work-life balance in Central New York. Visit our website at: http://www.cny-iplaw.com.
Contact: Please email resumes in confidence to ip@cny-iplaw.com. No recruiters, please.
Additional Info: Employer Type: Law Firm Job Location: Central New York
This position is in the Patent Development group of the HP Legal Departmentand is available at the following locations: Downers Grove, IL; Herndon, VA; Houston, TX; Plano, TX; Palo Alto, CA; and Murray Hill, NJ.
Responsibilities: 1. Preparing and prosecuting strategic, high quality patents protecting HP's products and services 2. Working closely with HP scientists and engineers to identify and protect inventions that are important to HP 3. Actively participating in HP's invention disclosure review process to help assure that HP's best inventions are identified and patented 4. Participating from time to time as a member of a cross-functional team to provide support in licensing, litigation, or other matters
Qualifications: The successful candidate is expected to possess all of the following qualifications:
1. Registration to practice before the USPTO 2. Undergraduate degree in Electrical Engineering, Computer Engineering, Computer Science, or Physics 3. JD degree from an accredited university 4. Admission to a state bar 5. 1-9 years experience as a patent attorney 6. Excellent written and spoken English 7. Strong academic credentials 8. Ability to work with clients in a team-oriented partnership to help them arrive at elegant solutions to their problems 9. Flexibility to accept new and different challenges in a fast paced, high tech environment 10. Ability to communicate effectively, both verbally and in writing 11. A positive attitude 12. A creative spirit
Contact: Apply online by visiting this link: http://www.hp.com/go/jobs. Please use event code POP001 (case sensitive) when applying.
Additional Info: Employer Type: Large Corporation Job Location: Downers Grove, IL, Herndon, VA; Houston, TX; Plano, TX; Palo Alto, CA; and Murray Hill, NJ.
A publicly-traded Houston-based company is expanding its legal department to include a Patent Counsel or Senior Patent Counsel. With an international reach, our client develops and builds technology-based solutions for the energy industry. This position comprises 2/3 patent prosecution and 1/3 IP portfolio management, including policy setting, IP litigation management, IP due diligence in M&A transactions, and licensing. Interested candidates should have 4-6 years' well-rounded intellectual property experience, with an emphasis on preparing and prosecuting domestic and foreign patent applications. Prior in-house experience strongly preferred. A mechanical engineering degree and/or energy industry experience would be ideal. This is a uniquely broad position with strong strategic influence and great upward potential. (No relocation benefits, so local candidates are preferred.)
Pye Legal Group is a boutique search firm that specializes in placing legal professionals with leading companies and law firms. With offices in Houston and Dallas, we have a team of 12 experienced recruiters who work collaboratively to produce the best results.
