Attorney (Litigation & Disputes) – Large Corporation – Santa Clara, Calif.

February 18, 2011- US - Silicon Valley & SF, - US - Southwest, - US - West, Emp - Corporate (in-house), Tech - Any / Other, Tech - Electrical, Tech - Mechanical, Work - Licensing / Other Corporate, Work - Patent Litigation

ST-Ericsson is an industry leader in design, development and creation of cutting edge mobile platforms and semiconductors across the broad spectrum of wireless technologies. The company is a key supplier to four of the top five handset manufacturers, which together represent about 80 percent of global handset shipments, as well as to other exciting industry leaders, including mobile operators and device manufacturers.

ST-Ericsson is headquartered in Geneva, Switzerland with main centers in China, France Japan, Korea and Sweden and locations in 20 more countries. Our global presence means we are always close to our customers and fully understand their specific markets.

The Legal unit needs to strengthen the team with an Attorney (Litigation & Disputes).

Mission:
• Provide qualified and highly efficient legal support to ST-Ericsson clients in relation to disputes and litigations concerning the ST-Ericsson Group covering all aspects of any controversy or claim and all aspects of dispute resolution, such as litigation, arbitration, mediation but also settlement of any controversy or claim outside of court or arbitration, including patent licensing.
• Provide such legal support in all areas, such as commercial, IP, financial and labour disputes but especially IP.
• Provide risk assessments and related strategy proposals based on current status of disputes and claims and further, based on such status, in concert with business responsible staff, review and develop business models and ways of conducting business.
• Provide legal training to ST-Ericsson clients.
• Continuously develop appropriate and efficient methods and tools for providing legal support, and generally improve quality of and reduce costs for legal services provided.
• Manage and control external legal dispute and litigation resources.
• Proactively assist in all other matters within the field of responsibility of the Legal Affairs function.

Required Experience:
• More than seven years experience of practicing qualified commercial IP law, dispute and litigations and extensive international experience, either through an assignment abroad or by working in a large number of matters with a substantial and varied international character
• Extensive and proven experience of managing patent licensing, disputes and litigations matters under especially the US legal system.

Required Education Level:
Master of Law

Other Skills/Competencies/Attributes:
• Good ability to handle and communicate with internal contacts, external counsels and counter parties.
• Excellent negotiation skills
• Ability to develop, implement and drive new working methods and tools
• Interest and preferably proven skills in educating internal clients in suitable standard legal matters
• Good ability to handle and stand stress
• Fluent in English.

Contact:
Apply by sending an email to: michael_giampaolo@ceridian.ca.

Additional Info:
Employer Type: Large Corporation
Job Location: Santa Clara, California

Associate Attorney – Law Firm – Pasadena, Calif.

February 16, 2011- US - Southwest, - US - West, Emp - Law Firm, Tech - Any / Other, Work - Patent Litigation

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

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

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

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

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

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

IP Partner (Lateral) – Law Firm – Irvine, Calif.

February 1, 2011- US - Southwest, - US - West, Emp - Law Firm, Tech - Biotech, Tech - Electrical, Tech - Mechanical, Work - Patent Litigation, Work - Patent Prosecution

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

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

Patent & TM Prosecutors – Law Firm – Los Angeles, Calif. (Updated)

January 3, 2011- US - Southwest, - US - West, Emp - Law Firm, Tech - Any / Other, Tech - Chemical / Pharma, Tech - Electrical, Work - Patent Prosecution

Patent Prosecutor – Law Firm – Los Angeles, Calif.

December 13, 2010- US - Southwest, - US - West, Emp - Law Firm, Tech - Chemical / Pharma, Tech - Electrical, Tech - Mechanical, Work - Patent Litigation, Work - Patent Prosecution

Patent Litigation Attorney – Large Corporation – Dallas, Texas

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

Patent Counsel – Small Corporation – Austin, Texas

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

Senior Patent Attorney – Large Corporation – Tucson, Ariz.

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

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

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

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

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

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

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

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

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

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

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

Patent Counsel – Other – Houston, Texas

October 28, 2010- US - MidAtlantic and South, - US - Midwest, - US - Southwest, Tech - Electrical, Tech - Mechanical, Work - Licensing / Other Corporate, Work - Patent Prosecution

Patent Counsel – Large Corporation – San Diego, Calif.

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

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

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

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

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

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

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

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

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

Patent Associate – Law Firm – Houston, Texas

October 12, 2010- US - Southwest, - US - West, Emp - Law Firm, Tech - Chemical / Pharma

Docket Manager – Law Firm – Austin, Texas

September 16, 2010- US - MidAtlantic and South, - US - Southwest, Emp - Law Firm, Tech - Any / Other, Work - Patent Litigation, Work - Patent Prosecution

Associate – Law Firm – Boulder, Colo.

August 4, 2010- US - Southwest, - US - West, Emp - Law Firm, Tech - Biotech, Tech - Chemical / Pharma, Work - Patent Agent, Work - Patent Litigation, Work - Patent Prosecution

IP Prosecution Associate or Patent Agent – Law Firm – Irvine / San Diego, Calif.

July 12, 2010- US - Southwest, - US - West, Emp - Law Firm, Tech - Any / Other, Tech - Electrical, Work - Patent Prosecution

Senior Patent Agent – Large Corporation – San Diego, Calif.

July 3, 2010- US - Southwest, - US - West, Emp - Corporate (in-house), Tech - Biotech, Work - Licensing / Other Corporate, Work - Patent Agent

Illumina is seeking a Senior Patent Agent to manage the continued development and implementation of patent strategy. Identifies and pursues valuable intellectual property generated in a dynamic research and development environment. Conducts patent freedom to operate analyses and due diligence analyses.

Why is one person more likely to develop a disease—like cancer, diabetes or Parkinson’s—than someone else? Why would one person respond differently to treatment than another? Illumina’s technologies are helping researchers around the world to answer these questions and others, on a scale not even possible a few years ago.

Illumina is the only life sciences company developing genome-wide technologies for genotyping, gene expression and sequencing—the three cornerstones of modern genetic analysis. By enabling studies of thousands of patient samples at once, our products set genetic discovery on fast forward. And we’re just getting started.

Responsibilities:
• Responsible for pre-patent filing review, providing advice to the company concerning the patent viability of its inventions and the advisability of filing patent applications covering the company’s inventions.
• Has an in-depth, working knowledge of patent prosecution including preparation of patent applications and filing of all papers relating to patent prosecution.
• Patent prosecution responsibilities include carrying out in-house prosecution and managing the prosecution efforts of outside counsel.
• Assists product development teams in evaluating freedom to operate.
• Initiates and interprets patentability searches.
• Prepares analyses of patents in regard to infringement and validity.
• Provides assistance in regard to intellectual property aspects of contracts and agreements.
• Collects and maintains data relating to the competitive patent landscape.

All listed tasks and responsibilities are deemed as essential functions to this position; however, business conditions may require reasonable accommodations for additional task and responsibilities.

Preferred Educational Background:
• Undergraduate technical degree required.
• Advanced technical degree (Masters or Doctorate) strongly preferred.
• Patent Registration Number required.

Preferred Experiential Background:
• 4+ years of patent prosecution experience required.
• Experience in a law firm providing patent prosecution services preferred.
• Experience with patent appeals, re-examination, re-issue, and interference proceedings is a plus.
• Practical experience in engineering or related field is strongly preferred.

Contact:
Apply online by visiting www.illumina.com/careers. When you join the high-performing team at Illumina, your work takes on new meaning—to an exponential degree. Our growth, our positive culture, and the impact our products are having in the world ignite a passion that drives our people forward. And together, we accomplish beyond expectations.

Equal Opportunity Employer

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

Patent Agent – Large Corporation – Pleasanton, Calif.

June 23, 2010- US - Southwest, - US - West, Emp - Corporate (in-house), Tech - Biotech, Tech - Chemical / Pharma, Work - Licensing / Other Corporate, Work - Patent Agent, Work - Patent Litigation, Work - Patent Prosecution

Roche, one of the world’s leading research-focused healthcare groups, is seeking a patent attorney to work in Pleasanton, California.

Responsibilities:
• Conduct patent clearance review of proposed products; draft and prosecute patent applications and supervise outside counsels relating to same activities; devise and execute portfolio strategy; and assist with licensing activities, due diligence reviews, litigation, as needed.
• Interact with research and development personnel in assigned product and technology areas; maintain current understanding of those areas; carry out patent clearance reviews and design counseling in those areas.
• Evaluate invention disclosures; prepare and prosecute patent applications; supervise outside counsels' preparation and prosecution of patent applications; devise and execute portfolio strategy in the assigned technology or product areas.
• Coordinate activities and legal positions with European colleagues handling ex-US patent matters.
• Assist in litigation, appeals, interference, reissues and reexaminations.
• Prepare, review, and revise patent-related licenses and agreements.
• Assist in due diligence reviews of third patent estates.
• Administrative, training and CLE activities.

Who you are
You’re someone who wants to influence your own development. You’re looking for a company where you have the opportunity to pursue your interests across functions and geographies, and where a job title is not considered the final definition of who you are, but the starting point.

• J.D. degree, and MS or Ph.D. in Life Sciences or Chemistry is required.
• State Bar; Registration before U.S. Patent and Trademark Office is required; California Bar preferred.
• 3 to 4 years law firm experience prosecuting U.S. patent applications in the biotechnology area is required.
• Prosecution of at least 6 diagnostics or genomics patent applications; additional 1-2 yrs. in-house patent experience is preferred.
• Solid patent law training and experience; strong written and verbal communication skills.
• Approximately 20% travel.

Contact:
The next step is yours. To apply online today and to learn about other exciting positions, please visit http://careers.roche.com and search for job number RMD061510-2509473.

Roche is an Equal Opportunity Employer.

Additional Info:
Employer Type: Large Corporation
Job Location: Pleasanton, California

At Roche, 80,000 people across 150 countries are pushing back the frontiers of healthcare. Working together, we’ve become one of the world’s leading research-focused healthcare groups. Our success is built on innovation, curiosity and diversity, and on seeing each other’s differences as an advantage. To innovate healthcare, Roche has ambitious plans to keep learning and growing – and is seeking people who have the same goals for themselves.

Patent Liaison – Small Corporation – Houston, Texas

April 5, 2010- US - Midwest, - US - Southwest, Emp - Corporate (in-house), Tech - Chemical / Pharma, Work - Licensing / Other Corporate, Work - Patent Litigation, Work - Patent Prosecution

Oxane Materials, Inc., a manufacturing-stage, oil and gas-focused nanotechnology company (>$30MM raised; 30+ employees) spun out of Rice University, is recruiting a seasoned Patent Liaison for its corporate R&D facility in Houston, TX.

The Patent Liaison will report directly to the VP of R&D and enjoy dotted line reporting to Oxane’s President. The Patent Liaison will work closely with the R&D team, senior corporate management, and outside Patent Counsel to:
• Prepare compelling Invention Disclosures
• Draft patent applications and prepare trademark applications
• Develop IP landscape analysis (Prior Art; track relevant external IP; provide evaluation of competitors’ IP; evaluate strength of Oxane IP)
• Work with VP of R&D to develop R&D program integrated with IP strategy
• Draft Office Action responses; possibly interview with Patent Examiners
• Make inventive intellectual contributions to Oxane inventions
• Develop a prospective IP budget and track performance against it
• Manage internal IP process compliance and oversee recordkeeping

Critical success criteria:
• More than 5 years working in a Patent Liaison capacity and at least 3 years as an R&D scientist
• Outstanding communication skills; excellent command of English (hearing, speaking, writing)
• Competent interpersonal skills; ability to make compelling presentations to internal stakeholders, outside Counsel, and Patent Examiners
• Excellent work ethic; proven ability to multitask in a rapidly evolving environment

Degrees and Designations:
• Registered Patent Agent with the USPTO strongly preferred
• Masters or Ph.D. in Materials Science, Ceramic Engineering, or Inorganic Chemistry
• Knowledge of upstream oil & gas, hydraulic fracturing, and proppants desirable but not required

Contact:
A competitive compensation package will be offered (salary, bonus, options, relocation allowance).

Qualified, interested candidates should submit their resume to info@oxanematerials.com.

Additional Info:
Employer Type: Small Corporation
Job Location: Houston, Texas