Foley & Lardner LLP is seeking a lateral associate with at least 2 years of law firm patent counseling / prosecution experience needed for its Washington DC office. Experience with nanotech, materials, semiconductor or cleantech patent prosecution and counseling strongly preferred. A technical background including materials science, nanotech, physics, semiconductors, ceramics, metallurgy or a related field required. Experience with small or start-up domestic companies and investors preferred. Position entails patent application preparation and prosecution (mostly for domestic clients), IP due diligence, opinions, patent portfolio management and general client IP counseling. This is not an IP litigation position. Top academics and experience required.
Contact: Interested applicants should apply at our careers website.
Additional Info: Employer Type: Law Firm Job Location: Washington D.C.
SRI International’s intellectual property department provides key leadership and support for the identification, protection and licensing of cutting edge innovations across a wide number of scientific and engineering disciplines. The successful candidate will be responsible for intellectual property strategy and counseling in support of SRI’s fast growing commercial and government business in Information Technology and related areas. Position will report to the Vice-President of Legal and Business Affairs and General Counsel.
Responsibilities: Patent Portfolio Development • Collaborate with SRI management, business development, and technical teams to build value propositions for technologies, and lead the development of supporting intellectual property strategies and portfolios • Identify opportunities and execute strategies for monetization of patent assets • Actively identify areas for portfolio growth and stimulate generation of ideas and associated invention disclosures • Lead an intellectual property review committee in making business-aligned strategy and investment decisions • Conduct training seminars for SRI staff in intellectual property matters • Select and supervise outside patent prosecution counsel • Critically review patent applications and office actions for alignment with technical, business, and IP strategies • In appropriate cases, draft provisional patent applications from technical papers
Intellectual Property Transactions • Assist business development staff in defining licensing strategies, including development of field-of-use definitions • Assist SRI’s legal counsel and contract administrators in drafting, negotiating, and reviewing license and other agreements • Assist inventors, business development and marketing staff with intellectual property issues in technical, business, and marketing materials and press releases • Lead the development of intellectual property-related sections of proposals, including collating information from other team members when SRI is prime contractor / systems integrator
Intellectual Property Investigations and Disputes • Support SRI’s legal counsel with response to demand letters, subpoenas, and other enforcement matters • Educate staff about issues with 3rd party patents and best practices for avoidance of litigation
Education: • Registered to practice before the US Patent & Trademark Office (Agent or Attorney) • MUST HAVE a MS or PhD in Computer Science
Experience: The successful candidate will typically have at least 5 years of experience in IP portfolio development in relevant technical fields, and business-focused experience in technology and IP evaluation and licensing. A quick study, the candidate will have a demonstrated record of rapidly getting up to speed on a diverse body of technologies and business opportunities. The candidate must be a strategic thinker, with self-confidence and judgment, demonstrating a strong combination of analytical and communication skills. Experience with Government funding regulations relating to patents (Bayh-Dole Act), and rights in software and data (FAR and DFARS) a plus.
Intellectual Ventures (“IV”) is a privately held, invention investment company based in Bellevue, Washington. Founded in 2000, IV’s business model centers on creating, acquiring and licensing intellectual property in a variety of technology areas. IV plans to commercialize inventions through licensing, spin-offs, joint ventures and industry partnerships.
Responsibilities: Working closely with business managers and senior executives, the Senior Patent Attorney will provide leadership and subject matter expertise primarily in the patent licensing area and particularly to a specific set of companies.
Additional responsibilities: • Direct the creation of materials to be shared with potential licensees. • Managing patent licensing efforts including asserting patents • Conduct patent claims and patent infringement analysis, including file history review. • Provide input into portfolio development for future licensing and enforcement. • Provide guidance to prosecution (reissues, reexaminations, continuations, foreign filing, etc) • Provide direction and effectively manage relationships with multiple outside counsel in all of the above. • Play appropriate role (which could vary from support role to lead negotiator to sole attorney depending on complexity of the transaction and relationships) in drafting and negotiating complex contracts and other materials to be shared with investors.
Qualifications: A qualified candidate will be a registered patent attorney, with strong patent licensing experience, a broad software, semiconductors, electronics, information technology, computer hardware, networking and wireless background and possess the following:
• 10+ years patent law experience with 2+ years recent experience in patent licensing. • Broad technical knowledge, familiarity with all relevant technologies • Excellent negotiation and contract drafting skills • Expert knowledge of principles, practices, case law and state of the art in patent licensing • Experience managing outside counsel • Ability to plan, organize and direct legal staff • Ability to communicate information effectively, both orally and in writing • Ability to work well with others and to quickly assimilate and understand information (including highly technical information) • Ability to make sound business decisions • Some work experience in an engineering role is preferred
Education: A qualified candidate will be a registered patent attorney with the following:
• J.D., Law degree (preferably from a strong IP program) is required. • Registration before the U.S. Patent & Trademark Office and license to practice in at least one state (preferably California) is required. • Bachelor’s degree (preferably graduate degree) in Electrical Engineering, Computer Science, or some other very closely related field is required.
Setter Roche LLP, a patent law firm located in the Denver-Boulder metro area, is seeking a patent attorney or patent agent with a background in electrical or computer engineering. Candidates should have excellent academic credentials and 2+ years of experience in drafting and prosecuting patent applications. Experience with opinions, licensing, and transactional matters is a plus. Ideal candidates will possess excellent writing, interpersonal, and communication skills.
The Firm works with leading scientists and engineers in the telecommunications and computer hardware and software fields. Attorneys and agents at Setter Roche enjoy a work-life balance and compensation that is highly competitive with other patent firms in the Midwest and Mountain West regions.
D’Ambrosio & Associates, P.L.L.C., a growing Intellectual Property Law Firm, has immediate openings for a Senior Associate Patent Attorney as well as a Junior Associate. The firm focuses on patent and trademark filings and prosecution, international patent and trademark prosecution, IP portfolio management, due diligence studies, and dispute resolution. We offer a highly competitive salary, friendly working environment and excellent benefits including medical and a retirement plan.
Qualifications: Senior Patent Attorney: Candidates for the Senior Associate position must have 4+ years of patent prosecution experience with an undergraduate degree in Chemical Engineering or Mechanical Engineering.
Junior Patent Attorney: Candidates for the Junior Associate position must have at least 1 year of patent prosecution experience with an undergraduate degree in Chemical Engineering or Mechanical Engineering.
Rosenbaum & Associates, P.C., a Chicago-based law firm, is seeking an experienced registered patent attorney with 3+ years of patent prosecution experience. Candidate should have experience in technologies involving implantable medical devices, biomaterial sciences, biomedical engineering, and/or diagnostics, e.g., ultrasound, optical coherence tomography.
Rosenbaum & Associates was founded in 1988 and is a growing, full-service boutique life science IP firm with a rapidly growing national client base. Our practice includes a very active domestic and international patent proseuction docket, licensing, counseling and litigation across all IP fields.
Contact: Interested applicants should contact: David G. Rosenbaum Managing Shareholder drosenbaum@biopatentlaw.com
Additional Info: Employer Type: Law Firm Job Location: Chicago, Illinois (North Suburban)
Lee & Hayes is seeking a senior patent counsel with leadership skills. This rare opportunity is only for those with the skill, interest, and ability to lead, motivate, direct, mentor, and inspire a team of patent professionals in procuring patent protection for a quarter of the world’s top 20 U.S. patent winners. Working primarily in computer-related technology fields (e.g., software, hardware, networking, etc.), your team—with you at the helm—will partner with our global client base in commercializing and strategically positioning their IP portfolios.
Lee & Hayes is ranked #1 for quality of computer and software patents by IP Law & Business and has been recognized multiple times as a “Go-To” IP firm by Corporate Counsel. Lee & Hayes offers a collegial and team-oriented work environment and a competitive compensation/benefits package. No book of business is required. Positions are primarily available in the Spokane headquarters, but our other offices (in Seattle and Austin) might be an option for the right fit.
Qualifications: 5+ years of law-practice experience with patent preparation and prosecution. Prefer EE, Computer Science/Engineering, or Physics degrees. USPTO admission.
Contact: For confidential consideration, please submit your resume (with USPTO registration number) to info@leehayes.com. Lee & Hayes is an equal opportunity employer (EOE) and strongly supports diversity in the workplace.
A Houston Intellectual Property firm specializing in patent and trademark prosecution wishes to hire a patent attorney having a minimum of four years IP experience in patent prosecution and trademark law. A degree in chemistry, chemical engineering or mechanical engineering is preferred. Duties will include patent and trademark filings and prosecution, international patent and trademark prosecution, IP portfolio management, due diligence studies, and dispute resolution.
Contact: Please email resume and contact information to ahoustonassoc@msn.com. We are a unique IP firm located in southwest Houston. Benefits and compensation commensurate with experience.
Additional Info: Employer Type: Law Firm Job Location: Houston, Texas
The firm of Mayback & Hoffman, P.A. is seeking a senior patent associate for its offices in Fort Lauderdale, Florida.
Responsibilities: • Prepare and prosecute patent applications, both foreign and domestic. • Prepare and prosecute U.S. trademark applications and assist with foreign filings. • Conduct freedom-to-operate analysis and prepare opinion letters if needed. • Experience in preparing commercial agreements involving intellectual property, such as licenses and joint venture agreements, would be beneficial but not necessary. • Client counseling on all IP matters. • Provide litigation support to Attorneys as needed.
Skills: • Advanced knowledge and experience preparing and prosecuting patent applications. • Demonstrated skill with client generation and retention. • Experience with patent-related litigation is a plus.
Education & Experience: • 5+ years hands-on experience as a working patent attorney. • Significant consideration will be given if candidate has 25%-50% of portable business. • Admission to practice before the USPTO as a registered patent attorney. • B.S. in relevant technical area. Advanced degree a plus. • Applicants must be qualified to practice law in one state and be a member in good standing, State of Florida admission is a plus but not necessary.
Contact: Interested applicants should contact Greg Mayback at greg@mayback.com.
Additional Info: Employer Type: Law Firm Job Location: Fort Lauderdale, Florida
Intellectual Ventures, a privately-held, invention investment company based in Bellevue, Washington seeks a Sr. Patent Counsel, International Filing. Responsibilities: • Handles all foreign patent application office actions and other prosecution • Advises on foreign filing strategy vis foreign filing decisions - reviews files and works with department heads as necessary to make same • Redrafts specifications and claims sets for foreign filing as necessary • Reviews, advises on and responds as necessary to any overseas litigation • Advise on international licensing issues • Interact with outside counsel in a variety of jurisdictions
Requirements: • 4 to 5 years experience in international patent practice as an attorney or local equivalent • Fluency in one or more languages other than English a plus • Technical degree – graduate level preferred • Familiarity with international licensing issues • Ability to interact with patent attorneys in a variety of technology areas • Must work well in a team environment
Contact: Interested applicants should please apply directly to jobs@intven.com.
Additional Info: Employer Type: Other Job Location: Bellevue, Washington
Lateral Link, a FORTUNE 500 technology company, is seeking to hire a Patent Counsel to develop and maintain US and foreign patent applications, trademarks, and copyrights; to perform patent infringement and validity analysis; to provide legal advice regarding patent viability, filing patent applications, domestic and foreign patent strategies; to render trademark opinions and advise regarding trademark usage and branding strategies; and to provide other general legal advice as necessary.
Requirements: Must have at least five years experience in patent preparation and prosecution. A strong software technical and patent prosecution background is preferred. Foreign prosecution experience is desirable but not essential. Trademark experience is desirable but not essential. Technical degree (Bachelor's or Master's degree in Computer Science preferred), JD, USPTO Registration, and at least one state Bar registration. Contact : Interested candidates please send a resume and cover letter to ereinert@laterallink.com.
Additional Info: Employer Type: Large Corporation Job Location: San Diego, California
Fennemore Craig, established in 1885 and now with more than 190 attorneys, is one of the largest full-service business law firms in the Southwest. Fennemore Craig seeks a registered patent attorney with two to four years patent prosecution experience as an associate for the firm’s Intellectual Property Group for its Phoenix office. The ideal candidate will possess patent prosecution experience with a mechanical or chemical engineering background; however, electrical engineering background with chemistry proficiency is also acceptable. Patent application and technical writing experience is preferred. Excellent professional credentials required, including demonstrated skills in writing, attention to detail and excellent client relations. Arizona Bar membership preferred (or willingness to sit for the Bar). Lawyers choose to make their careers at our firm because we are a highly visible, regional firm with sophisticated/challenging legal work and we offer opportunities for early and significant responsibility. Fennemore Craig recognizes that our lawyers are our greatest asset, and our competitive and flexible compensation reflects this recognition.
Contact: Interested applicants should please email resume and cover letter to: recruiting@fclaw.com.
Additional Info: Employer Type: Law Firm Job Location: Phoenix, Arizona
Storm LLP, a nationally renowned intellectual property boutique in Dallas, has Associate and Of Counsel positions available. The ideal candidate would have 5 years of patent litigation experience. This leading boutique specializes in all intellectual property matters and would give the associate great hands-on experience in a fantastic atmosphere. Associates are given significant case responsibility, so litigation experience is very important. USPTO registration is required. There is an immediate need, so apply today. The firm is also interested in Partners with portable business and who want to work in a quality firm.
Contact: For more information, please contact Meredith Foster, Storm LLP, 901 Main Street, Suite 7100, Dallas, TX 75202 or by email to mfoster@stormllp.com. Additional Info: Employer Type: Law Firm Job Location: Dallas, Texas
Pacific Biosciences (PacBio), headquartered in Menlo Park, CA, is seeking a patent agent. It is a startup biotechnology company developing a transformative single-molecule, real-time (SMRT™) DNA sequencing platform. PacBio’s goal is to commercialize SMRT DNA sequencing technology, eventually enabling sequencing of individual genomes as part of routine medical care. The company is currently venture funded by Kleiner Perkins Caufield & Byers, Mohr Davidow Ventures, Alloy Ventures, Maverick Capital, and others.
The position involves the preparation and prosecution of patent applications on various aspects of the company’s technology before the USPTO, as well as advising foreign counsel on foreign prosecution. Position will also involve assisting in management of docket, overall portfolio and outside counsel, performing prior art and other searches, and assisting in general administration of legal department.
Requirements: Must be registered to practice before USPTO, and in good standing, with at least three years experience working as patent agent in patent preparation and prosecution.
Must have significant technical background in molecular biology, biochemistry, genetics or related fields, including advanced degree (MS or Ph.D.) and/or significant hands-on experience working in a relevant technical field. Must be able to communicate effectively with scientific staff in a variety of technology areas. Experience working in multidisciplinary environment (wet science/engineering/software) highly desirable. Must be self motivating, creative, diligent and have excellent interpersonal skills. Must be capable of effectively managing multiple tasks in efficient and organized manner. Must be able to provide examples of patent work.
Clock Tower Law Group is looking for a 2L or 3L who: • Has passed the Patent Bar Examination • Is interested in Internet technology • Is interested in computers and software • Has strong opinions and enjoys writing about them, and • Enjoys being entrepreneurial and working with entrepreneurs.
The student's grades, participation on law review, and undergraduate degree are not important to us. We are primarily looking for someone who enjoys thinking differently about solutions to problems. We will work with the ideal candidate on flexible hours.
The job will involve a whole range of IP activities in a small office setting including: • Drafting patentability opinion letters • Responding to USPTO office actions • Trademark filings, and • Domain name issues
Jenkins, Wilson, Taylor & Hunt, P.A., a patent boutique law firm located in the heart of North Carolina and the Research Triangle Park area, is seeking a patent attorney. Our target candidate must have a degree in Electrical or Computer Engineering and 2-4 years of experience in patent preparation and prosecution. USPTO registration is required.
We offer a highly competitive compensation and benefit package along with the opportunity to work with research universities and technology driven corporations.
Contact: If you meet the criteria and desire to work with quality clients and attorneys, please send your resume to our hiring partner, Gregory Hunt at: ghunt@jenkinswilson.com.
Additional Info: Employer Type: Law Firm Job Location: Durham, North Carolina
Invention Law Group, PLLC seeks a highly skilled, motivated and experienced patent attorney to provide support to its patent prosecution group.
Intellectual Ventures (“IV”) is a privately held, invention investment company based in Bellevue, Washington. Founded in 2000, IV’s business model centers on creating, acquiring and licensing intellectual property in a variety of technology areas. IV plans to commercialize inventions through licensing, spin-offs, joint ventures and industry partnerships.
Qualifications: • J.D. degree from high-quality, ABA accredited law school • Undergraduate degree in EE, Physics, or Computer Science • Admission to Washington or other state bar • Admission to practice before US Patent and Trademark Office • At least four years experience as practicing patent attorney, with primary emphasis on patent prosecution in electrical arts • Ability to lead and manage a fast moving dynamic team • Excellent analytical, communication and organizational skills a must
Responsibilities: • Assisting in strategic management of existing portfolio of issued patents and on-going prosecution of pending cases • Evaluating potential licensing value, technical merit, and patentability/validity of invention disclosures, patent applications and patents • Reviewing and evaluating the quality, cost-effectiveness and scope of work performed by outside patent counsel • Assisting in developing and implementing portfolio analysis and tracking tools to build infrastructure and enable efficient scaling of work for rapidly growing portfolio • Managing docketing team to ensure accurate entry of patent information • Managing staff of Paralegals and Patent Assistants responsible for researching and evaluating patent file histories and title assignments for patent due diligence
Desired Experience: • Due diligence investigations of patent portfolios • Foreign prosecution • In-house experience or other experience managing outside counsel • Broad technical or business knowledge of software, eCommerce, computer systems, semiconductors, telecommunications or consumer electronics.
Shimokaji & Associates, P.C., an intellectual property law firm in Irvine, California, seeks attorney for Business Development and Patent Prosecution position. Position can be business development only or a combination of business development and case work. This position will be responsible for developing new business in litigation and patent prosecution areas by establishing, maintaining and growing relationships with key decision-makers at medium to large size corporations.
Qualified candidate must have experience in patent prosecution with a technology background (minimum 10 years preferred). Experience as corporate counsel a plus. Ideal candidate must possess excellent communication skills and be professional, charismatic, and self-motivated. Prior business development experience preferred.
Position requires the ability to prospect via phone, email or other medium, face-to-face sales calls, interaction with clients and potential clients at networking events, and the ability to work independently and as a team player.
Business development position (without case work) will pay a temporary salary and then convert to a commission only pay structure after a specified time.
Contact: Interested applicants should please send cover letter and resume to sbowen@shimokaji.com.
Additional Info: Employer Type: Law Firm Job Location: Irvine, California
Edell, Shapiro & Finnan is seeking an associate with 2+ years of experience in drafting and prosecuting patent applications in electrical arts. Candidates should possess a degree in electrical engineering, strong writing skills. Familiarity with USPTO practices and prior experience in engineering are desirable. Pleasant work environment, competitive benefits and great work/life balance atmosphere.
Contact: Interested applicants should please email dmr@usiplaw.com or direct postal responses to:
Legal Administrator Edell, Shapiro & Finnan, LLC 1901 Research Blvd., Suite 400 Rockville, MD 20850 Additional Info: Employer Type: Law Firm Job Location: Rockville, Maryland
As part of Lee & Hayes — which is ranked #1 for quality of computer and software patents by IP Law & Business and is recognized as a “Go-To” IP firm by Corporate Counsel — you can help procure patent protection for six of the world’s top 20 U.S. patent recipients. Working primarily in computer-related technology fields (e.g., software, hardware, networking, etc.), you will partner with our global client base in commercializing and strategically positioning their IP portfolios. Lee & Hayes offers a collegial and team-oriented work environment, flexible hours, and a competitive compensation/benefits package. Personal productivity is not determined based upon an annual billable hour requirement. Available positions are primarily in Austin (http://www.austin-chamber.org) and in Spokane (http://www.visitspokane.com).
Qualifications: 2+ years of law practice experience with patent preparation and prosecution. Greatly prefer EE or Computer Science/Engineering degree. USPTO admission.
Contact: For confidential consideration, please submit your resume (with USPTO registration number) to info@leehayes.com. Lee & Hayes is an equal opportunity employer (EOE) and strongly supports diversity in the workplace.
Additional Info: Employer Type: Law Firm Job Location: Austin, Texas & Spokane, Washington
Foley & Lardner LLP is seeking a lateral associate with at least 2 years of law firm patent counseling / prosecution experience needed for its Washington DC office. Experience with nanotech, materials, semiconductor or cleantech patent prosecution and counseling strongly preferred. A technical background including materials science, nanotech, physics, semiconductors, ceramics, metallurgy or a related field required. Experience with small or start-up domestic companies and investors preferred. Position entails patent application preparation and prosecution (mostly for domestic clients), IP due diligence, opinions, patent portfolio management and general client IP counseling. This is not an IP litigation position. Top academics and experience required.
