Patent Counsel – Large Corporation – San Francisco, Foster City, CA, New York

August 21, 2020- US - Northeast, - US - West, Tech - Computer Science, Tech - Electrical, Work - Intellectual Property, Work - Other Patent

Visa is seeking a Patent Counsel. In this position, the Patent Counsel provides intellectual property (IP) legal services to clients primarily in the computer software and hardware arts.

Responsibilities for this position include but are not limited to:

Preparation and prosecution of U.S. and foreign patent applications.
Advising clients on freedom to operate in view of 3rd-party patents.
Assisting in drafting and negotiating agreements, including licenses, joint development agreements, technology agreements, and nondisclosure agreements.
Providing IP subject matter expertise to commercial attorneys.
Assessing claims involving intellectual property rights by and against 3rd parties.
Advising clients in the development and implementation of intellectual property protection strategies to support the needs of individual business units.

Qualifications:

Basic Qualifications:

Four to seven years of experience in drafting and prosecuting U.S. and foreign patent applications; prep and pros experience in the software arts required.
Expertise in subject matter eligibility required.

Preferred Qualifications:

Juris Doctorate degree and undergraduate, or graduate, degree in applicable engineering or science, preferably in electrical engineering or computer science.
Admission to practice before U.S. Patent and Trademark Office and admission to at least one State or District of Columbia Bar.
Eligible for Registered In-House Counsel status in California.
Experience evaluating third party patents, performing freedom-to-operate studies, and drafting freedom-to-operate opinions.
Ability to implement and monitor intellectual property strategies to support business needs and make changes to such strategies as needed.
Experience drafting license agreements, development agreements, and nondisclosure agreements.
Experience practicing in both a large law firm and an in-house legal department desired.

Additional Information:

Work Hours:

Varies upon the needs of the department

Travel Requirements:

This position requires travel 5-10% of the time.

Mental/Physical Requirements:

This position will be performed in an office setting. The position will require the incumbent to sit and stand at a desk, communicate in person and by telephone, frequently operate standard office equipment, such as telephones and computers, reach with hands and arms, and bend or lift up to 25 pounds.
Visa will consider for employment qualified applicants with criminal histories in a manner consistent with the requirements of Article 49 of the San Francisco Police Code.

Visa is an EEO Employer. Qualified applicants will receive consideration for employment without regard to race, color, religion, sex, national origin, sexual orientation, gender identity, disability or protected veteran status. Visa will also consider for employment qualified applicants with criminal histories in a manner consistent with EEOC guidelines and applicable local law.

Apply online at:
https://jobs.smartrecruiters.com/Visa/743999717711826-patent-counsel

Additional Info
Employer Type: Large Corporation
Job Location: San Francisco, Foster City, CA, New York

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IP Counsel – Large Corporation – Mentor Ohio

April 5, 2020- US - Midwest, Emp - Corporate (in-house), Tech - Electrical, Work - Patent Prosecution

Avery Dennison (NYSE: AVY) is a global materials science company specializing in the design and manufacture of a wide variety of labeling and functional materials. The company’s products, which are used in nearly every major industry, include pressure-sensitive materials for labels and graphic applications; tapes and other bonding solutions for industrial, medical, and retail applications; tags, labels and embellishments for apparel; and radio frequency identification (RFID) solutions serving retail apparel and other markets. Headquartered in Glendale, California, the company employs more than 30,000 employees in over 50 countries. Reported sales in 2019 were $7.1 billion. Learn more at www.averydennison.com.

Job Description

The scope and responsibilities of the position include providing global intellectual property (“IP”) services to Avery Dennison, including IP strategy, domestic and international IP procurement, enforcement, and clearance, business counseling, and transactional support. The position reports to the Global VP and Associate General Counsel, IP, and works closely with the company’s technology and innovation leadership teams, as well as Regional Directors of R&D, Marketing, and Procurement. This position will be based in Mentor, Ohio, USA.

To be successful in your role of IP Counsel/Sr. IP Counsel, we need you to deliver on these responsibilities:

Deliver highly skilled patent procurement services.
Coordinate the drafting and filing patent applications (domestic, foreign and PCT applications), liaising with inventors, internal IP lawyers, agents, staff, and foreign counsel to acquire the information needed to prepare and successfully prosecute patent applications.
Support global IP strategy that targets growth in key market segments and accelerates new product innovations in each key market around the world.
Provide a full spectrum of intellectual property legal services including: client counseling; technology development and licensing contracts; trade secret protection, and patent and trademark protection, surveillance, enforcement, licensing, and litigation.
Conduct patent novelty, validity and right to market studies, patent and information searches, and analyzing and summarizing search results.
Provide strategic mentorship as a business partner to R&D, Marketing, and Procurement by integrating legal advice with critical business strategies for product development, joint development efforts, and licensing matters.
Provide IP related advice for M&A assessments and negotiations, joint ventures, and start-up investments.
Strong collaboration skills to engage and partner with colleagues in the global law department and global client teams.

Qualifications

Avery Dennison is a leader in innovation. Your experience should include the following:

Demonstrated strength at collaboration in matrix organizations, especially in a global organization and across functions.
Outstanding understanding of, and ability to take and manage, risk.
Strong business sense, and ability to connect the law and legal strategies to business goals in way that guides clients to successful outcomes.
Demonstrated ability to lead.

Education and Credentials

A technical degree is required, preferably in Electronics, Electrical Engineering, Computer Science or Engineering, particularly RFID, transponders, sensors, and printer systems, or in Chemistry, Chemical Engineering, or Materials Science or Engineering, particularly polymer chemistry.
A law degree with excellent credentials, registration with the USPTO, and a member of the Bar in good standing is also required.

Required Experience

At least 10 years of patent law experience, including strong business counseling and strategy, IP-related transactions, patent drafting and prosecution, freedom to operate opinions, and litigation.
Experienced with various types of transactions (M&A, JV, licensing, JDA, partnering agreements, negotiation experience with universities).
Proven ability to deal effectively with complex legal issues that have both legal and business ramifications.
Strong communication and interpersonal skills, with demonstrated experience of collaboration and successfully engaging with global teams.
Demonstrated ability to lead and build relationships at a distance.
Demonstrated excellence in client counseling.
Highly experienced in technology relevant to Avery Dennison’s products, particularly RFID, transponders, sensors, and printer systems.

Preferred Experience:

A strong working knowledge of and experience with PCT, European patent practice, and China patent practice is highly preferable.
Demonstrated experience with technologies relating to Avery Dennison’s products and markets is strongly preferred.
Litigation experience is a significant plus.
Experience with other IP such as trademarks and copyrights is useful.

Contact
Apply online via the following link: https://smrtr.io/3ZKdd.

Additional Info
Employer Type: Large Corporation
Job Location: Mentor, OH

Associate Patent Attorney – Other – McLean, Va.

April 5, 2020- US - MidAtlantic and South, Tech - Biotech, Tech - Chemical / Pharma, Tech - Computer Science, Tech - Electrical, Tech - Mechanical

Roberts Calderon Safran & Cole, P.C. (RCSC), an Intellectual Property Law Firm located in prestigious Tysons Corner, Virginia seeks a registered Patent Attorney with three to five years of patent preparation and prosecution experience, and a degree in mechanical or electrical engineering with substantial experience drafting patent applications in the computer and software related fields with trademark experience being a plus, though not required. The ideal candidate will have sufficient portable business to occupy at least 25%, but not more than 50% of the attorney’s time.

Electrical Patent Associate – Law Firm – Alexandria, VA.; Pittsburgh, PA, or Washington, DC

March 19, 2020- US - MidAtlantic and South, Emp - Law Firm, Tech - Computer Science, Tech - Electrical, Work - Patent Prosecution

Buchanan Ingersoll & Rooney has an immediate opening for an Electrical Patent Associate with experience in Blockchain and distributed ledger technology. Qualified candidates must have substantial experience in drafting and prosecuting U.S. patent applications for electrical circuitry and software-related inventions, excellent writing skills, and a degree in Electrical Engineering.

Experienced Patent Attorney – Law Firm – Seattle, Washington or Washington DC

March 17, 2020- US - Northwest, - US - West, Emp - Law Firm, Tech - Computer Science, Tech - Electrical, Work - Patent Prosecution

The Seattle and Washington D.C. offices of Han Santos, PLLC are seeking experienced patent prosecution associates to join its growing patent prosecution practice. Han Santos is a local law firm that offers a collegial work environment with opportunities to grow your legal skills and practice. Han Santos provides corporate, securities, IP procurement, and IP counseling services to clients ranging from small startups to Fortune 500 companies. Our compensation and benefits model is designed to attract and incentivize performers while offering an alternative to the high production commitment work environments of traditional law firms.

Senior Patent Engineer – Small Company – San Francisco, CA

March 10, 2020- US - Silicon Valley & SF, Emp - Corporate (in-house), Tech - Electrical, Work - Other Patent, Work - Patent Agent

RPX Corporation is seeking a Senior Patent Engineer (electrical engineering) to join its San Francisco headquarters.

The Patent Analysis department synthesizes complex technologies and legal patent issues into actionable intelligence for RPX executives and clients. Patent Analysis research supports initiatives in defensive portfolio acquisitions, prior art validity actions, and advisory services. The positions in Patent Analysis require a deep and broad knowledge of specific technology sectors.

As a Senior Patent Engineer, you will analyze patent claims and related materials in view of legal, technological, and business environments to understand the technical merit and patent quality of individual patent portfolios. Your main responsibility is to distill a body of analysis and research into a concise, clear, and actionable assessment to both technical and non-technical audiences. This position reports in to the Director of Patent Analysis and is located in San Francisco, CA.

This position is based in San Francisco, CA. Remote or contract opportunities are not available for this role.

About this role

Assess numerous engineering and legal factors to extract patent value proposition
Draw on detailed knowledge of relevant technologies, companies, and industries
Identify the products and services to which a patent claim relates
Explain complex technical issues to nontechnical audiences
Isolate critical technical components of patents, products, and services
Learn and apply legal concepts related to patents including prosecution and litigation
Research timeliness of patents in support of validity challenges and prior art reports
Support analysis conclusions with research driven logic and confidence
Collaborate across the organization in-person and with virtual, global teams
Share assessment and communicate findings to relevant internal and external clients

About You

Education:

Bachelor’s degree in Electrical Engineering
Master's degree or Doctor of Philosophy viewed favorably
Patent Attorney or Agent viewed favorably

Experience:

Minimum of 4 years’ experience with patent analysis and licensing engagements in explaining highly technical subject matter
Involvement in patent issues such as prosecution, litigation, and valuation viewed favorably

Skills and Abilities:

Demonstrates a shown history of success, ownership, and accountability
Service-minded and passionate about results with an ability to develop positive relationships
Capable of handling deadlines and conflicting priorities to deliver quality results
Motivated and focused with a willingness to pursue additional projects
Able to demonstrate good judgment
Highly focused, organized, and pay attention to details
Proficiency with Microsoft Office suite

Technical Skills: Broad expertise in semiconductor process, integrated circuits design, computer and consumer electronics system architecture, and implementation of areas such as:

Semiconductor manufacturing (e.g., fabrication process, packaging, assembly, and test)
Processors (e.g., standalone, embedded, multi-core, SoC, x86, ARM, GPU)
Memory (e.g., DRAM, Flash, embedded memory)
Analog circuits and clock management (e.g., ADC/DAC, PLL, Amplifier)
Standards and Interfaces (e.g., PCIe, JEDEC, high speed serial connectivity, bus architectures)
Sensors (e.g., image sensor, MEMS)
Display panel structure (e.g., OLED, Micro-LED)
System integration (e.g., Laptop, Mobile handset, Set-Top-Box, Server)

RPX is an equal opportunity employer.

Contact
Apply online here: https://app.jobvite.com/j?aj=o73AbfwF&s=Patently-O.

Additional Info
Employer Type: Small Corporation
Job Location: San Francisco California