Senior Patent Analyst – Small Corporation – San Francisco, Calif.

September 9, 2019- US - Silicon Valley & SF, - US - West, Emp - Corporate (in-house), Tech - Computer Science, Tech - Electrical, Work - Licensing / Other Corporate, Work - Patent Litigation, Work - Patent Prosecution

RPX Corporation is seeking a Senior Patent Analyst who will assess patent validity. In this role, you will draw upon industry experience to thoroughly research prior art and patent validity, supporting business initiatives including RPX’s Patent Quality Initiative, defensive buying, acquisition syndication (for large portfolios), and advisory services. To be successful in the role, this person must (1) possess a broad knowledge of information technologies including software, networking, mobile communications, and semiconductors, (2) be able to arrive at well-justified conclusions based on detailed research, and (3) be able to effectively communicate complex technical principles to non-technical audiences.

About the Role

Research prior related disclosures/commercial efforts to assess viable claim constructions, novelty, and obviousness
Review patent claims and other materials to figure out basis for active or potential infringement disputes
Explore relevant market(s) to assess adoption of patent usage
Identify and locate written evidence for specific innovations that occurred prior to the filing of a patent
Coordinate with external subject matter and enforcement experts
Communicate findings to relevant internal and external clients

About You
Education/Experience:

Bachelor’s degree in Computer Science, Computer Engineering, Electrical Engineering, or related Information Technology field.
Minimum of 6 years’ experience in technical or engineering role in an Information Technology industry such as Software, Networking, Semiconductors, and/or Mobile Communications.
Minimum of 2 years’ involvement in patent issues including prosecution, litigation, and valuation viewed favorably

Required Proficiencies
Skills and Abilities:

Ability to identify the market, industry segments, and products and services to which a patent claim relates
Knowledgeable of general history of various information technologies including key developments in those fields
Ability to use critical thinking skills to catalog, match, and relate similar patents, portfolios, and technologies
Results-oriented and service-minded with ability to develop and foster relationships with key stakeholders internally and externally
Collaborative work ethic and willingness to be a part of a team-centric culture
Ability to work with virtual, global teams
Excellent interpersonal, networking, and influencing skills
Motivated, self-directed, and proactive with a willingness to take on additional projects
Consistent track record of excellence, ownership, and accountability
Confident personality supported by focused, logical thinking and fact-based, documented conclusions and opinions
Ability to demonstrate sound judgment and execute against deliverables under deadlines and competing priorities
Highly focused, organized, and detailed
Excellent oral and written communications and presentation skills
Represents RPX in a manner consistent with its culture and values

Technical Skills:

Deep familiarity with a variety technology domains
Strong foundation in engineering

Preferred Proficiencies:

Advanced engineering degree(s) viewed favorably
Previous experience with patents viewed favorably

RPX is an equal opportunity employer.

Contact
Apply online by visiting this link: https://app.jobvite.com/j?aj=ojECafwt&s=Patently-O

Patent Counsel – Small Corporation – Des Moines, Iowa

July 29, 2019- US - Midwest, Emp - Corporate (in-house), Tech - Electrical, Tech - Mechanical, Work - Licensing / Other Corporate, Work - Patent Prosecution

Intoxalock is seeking a Patent Counsel to work in its Des Moines, Iowa, offices. This senior position has responsibility for (i) counseling all levels of the company’s management, business and technical personnel regarding patent and trade secret strategies and risks, (ii) continually assess the technology needs of the company from an IP perspective, (iii) conducting freedom to operate assessments in support of new product launches, (iv) managing overflow patent work with outside counsel, (v) providing due diligence, patent enforcement and transactional support to business acquisitions and assets, and (vi) developing and implementing a strategic strategy to identify, assess and acquire attractive targets to grow the company intellectual property portfolio.

Key Accountabilities:

Protect company innovations by drafting and prosecuting patent applications and collaborating closely with outside counsel on the same, as needed.
Review and clear new and modified products from a patent infringement perspective, and issue written opinions, as needed.
Forge a deep partnership with company leadership to evaluate and protect new product inventions and develop internal processes for same.
Support initiatives to regularly review, identify and enforce patents against third party infringers.
Contribute patent expertise and experience to identify and support merger and acquisition activity, as needed.
Review and approve product labeling, packaging, advertising and promotional materials and other external communications for compliance with applicable patent rules and regulations.
Develop strategies to identify attractive intellectual property based on input from company leadership, prioritize for execution and assist with negotiation and acquisition.
Collaborate with company leadership in preparation, negotiation and review of agreements relating to technology issues.
Train and educate other employees in patent related matters.
All other duties as assigned.

Job Requirements:

BS/BA or higher in mechanical or electrical engineering and JD Degree from an accredited institution.
Deep experience with drafting and prosecuting patent applications and conducting freedom to operate assessments. Significant experience with design patents is preferred, as well as experience in negotiating and acquiring rights to intellectual property.
Demonstrated strong leadership and relationship building skills that lead to successful development, implementation and improvement of patent processes across functions/organizations.
Member of at least one state bar and admitted to practice before the United States Patent and Trademark Office.
Demonstrated broad business orientation and successful ability to partner legal skills with business goals.
Will consider part-time (20+ hours per week) and partially remote work location.

Contact
Apply online by visiting this link: www.intoxalock.com/about/careers.

Additional Info
Employer Type: Small Corporation
Job Location: Des Moines, Iowa

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

July 17, 2019- US - MidAtlantic and South, Emp - Corporate (in-house), Work - Admin, Work - Licensing / Other Corporate, Work - Patent Litigation

Unified Patents seeks two qualified patent lawyers with post-grant experience to join its growing legal team. Applicants must have at least 5 years of law firm or other relevant experience before the Patent Trial and Appeal Board (PTAB) working on post-grant petitions (IPR, PGR, and CBM), reexaminations, or other administrative drafting and litigation experience.

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

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

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

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

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

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

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

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

Patent Coordinator – University of Illinois Urbana-Champaign – Urbana, Ill.

May 31, 2019- US - Midwest, Emp - Educational, Tech - Any / Other, Tech - Biotech, Tech - Chemical / Pharma, Tech - Computer Science, Tech - Electrical, Tech - Mechanical, Work - Admin, Work - Licensing / Other Corporate, Work - Paralegal / Legal Secretary, Work - Patent Prosecution

The University of Illinois Urbana-Champaign is seeking a Patent Coordinator. Responsibilities include the following:

Coordinate administration of US and foreign patent applications and other legal protection of UIUC technologies.
Work with OTM technology managers and UIUC inventors during the technology evaluation and patenting process, including: assisting in assembly of supporting data and documentation; reviewing patent search results; monitoring preparation and filing of patent applications, providing assistance in responding to patent office actions; and providing recommendations regarding US and foreign patent processes, costs, and alternatives.
Serve as a liaison between OTM, UIUC Legal Counsel, and outside patent counsel regarding the selection, engagement process and authorization/approval of expenditures for outside counsel.
Review and approve invoices.
Assist with drafting patent licenses and other intellectual property agreements.
Monitor actions and scheduled due dates for US and foreign patent process to ensure timely responses.
Manage inventorship, ownership, and assignment issues and decision-making.
Maintain and organize patent case files.
Keep abreast of changes in patent laws and procedures.
Work with patent counsel to manage patent costs.
Assist in the preparation of the patent budget.
Provide ongoing training and updates on patent subjects.
Review all correspondence with patent counsel and take appropriate actions as required.
Participate in the development of OTM infrastructure, policies, and procedures.
Oversee accuracy and completeness of database patent or patent-related records.
Prepare Excel reports as needed from database records on patent and patent-related matters.
Work with interns to improve searching and inventor interviewing processes, and provide mentoring for interns interested in patent law.
Prepare and file certain provisional patent applications.
Participate in campus outreach to educate faculty, students and staff on intellectual property related manners.
Manage activities of patent fellow.

Candidates must possess a bachelor’s degree in a physical science, engineering or related field with one to three years working knowledge of patent filing and prosecution procedures. Education must qualify the candidate to take the examination for registration to practice before the United States Patent and Trademark Office. Other requirements include: detail oriented with multi-tasking and strong prioritizing skills; excellent verbal and written communications skills to effectively interact with University and departmental officials/staff; ability to work in a fast-paced environment under multiple deadlines; strong interpersonal skills to effectively communicate with all levels of professionals within the organization; proven teamwork skills; ability to use independent judgment and make sound decisions regarding patents and intellectual property; proficiency with Microsoft Office suite applications; demonstrated teamwork skills in a highly complex business environment; ability to work independently and exercise good judgment and discretion.

Preferred qualifications: Advanced degree in a physical science, engineering or related field; registered patent practitioner; registered Patent Agent, if not registered, preferably has the background to meet the USPTO qualifications to become certified as a Patent Agent.

Contact
For full consideration, candidates must apply and submit a letter of application, resume, and names/addresses/phone numbers of three professional references by June 12, 2019 to: https://uajobs.hr.uillinois.edu/.

Additional Info
Employer Type: Education
Job Location: Urbana, Illinois

Senior Patent Counsel – Large Corporation – Audubon, Pa.

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

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

Responsibilities

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

Qualifications

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

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

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

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

Patent Attorney / Agent / Technical Specialist – Law Firm – Pittsburgh, Pa.

April 29, 2019- US - Northeast, Emp - Law Firm, Tech - Biotech, Tech - Chemical / Pharma, Tech - Computer Science, Tech - Electrical, Tech - Mechanical, Work - Licensing / Other Corporate, Work - Patent Litigation, Work - Patent Prosecution

The Webb Law Firm, a highly-regarded Pittsburgh-based intellectual property boutique law firm with an international and national client base is growing and is seeking multiple lateral candidates with a technical background in one of the following areas to add to its team of more than 55 dedicated intellectual property attorneys: Chemistry, with knowledge of small molecule organic chemistry; Pharma; Computer Science; Engineering
Mechanical Engineering; Science / Metallurgy

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

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

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

Principal Responsibilities:

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

Qualifications:

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

Education:

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

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

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

Patent Attorney / Patent Agent – Small Law Firm – Falls Church, Va. (Updated)

April 5, 2019- US - MidAtlantic and South, Emp - Law Firm, Tech - Computer Science, Tech - Electrical, Tech - Mechanical, Work - Licensing / Other Corporate, Work - Patent Prosecution

J. A. Lindeman & Co. is seeking a Patent Attorney/Patent Agent. As a member of the firm’s IP team, the attorney/agent will be involved in all aspects of software, computer science, and engineering practice, including:

Patent Licensing Counsel – Large Corporation – Multiple Locations

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

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

Patent Counsel – Large Corporation – Multiple Locations

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

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

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

Key Responsibilities:

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

Education And Experience Required:

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

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

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

Patent Attorney – Large Corporation – Worthington, Ohio

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

Hyperion Materials & Technologies is seeking a Patent Attorney.

Patent Portfolio Manager – Other – San Francisco, Calif.

October 3, 2018- US - Silicon Valley & SF, - US - West, Emp - Corporate (in-house), Tech - Computer Science, Work - Intellectual Property, Work - Licensing / Other Corporate

Cruise Automation, who creates autonomous driving technology to build a safer and more efficient world, is seeking a Patent Portfolio Manager. Administer Cruise’s patent program, including promotions, incentives, recognition, and training.

Associate Counsel, Intellectual Property – Large Corporation – Cleveland, Ohio (Metro Area)

September 19, 2018- US - Midwest, - US - Northeast, Emp - Corporate (in-house), Tech - Chemical / Pharma, Work - Licensing / Other Corporate, Work - Patent Prosecution

PolyOne, a $3+ billon world-class, global provider of polymer solutions with materials used in everyday products ranging from sports equipment to medical devices to electronics and more, is seeking an Associate Counsel, Intellectual Property. Under the guidance of the General Counsel and reporting to the Senior Counsel, Intellectual Property, this person will provide a full range of intellectual property legal support for portions of PolyOne’s businesses globally. As part of the company’s small in-house IP legal team, this position will play an integral role in building and managing a global IP portfolio aligned with commercial and technical objectives, identifying and advising on IP-related risks and other issues associated with development and sale of new products and other business activities, and promoting awareness of and compliance with IP-related policies and best practices throughout the global organization.

This position will be based at PolyOne’s global headquarters located in Avon Lake, Ohio, a suburb of Cleveland. Relocation assistance for this position is negotiable.

Essential Functions

Prepares, files, and prosecutes patent and trademark applications in the United States and coordinates with foreign counsel to file and prosecute the same outside the United States
Drafts, negotiates, and advises on IP-related agreements and agreements containing IP provisions, including confidentiality agreements, development agreements, services agreements, license agreements, supply agreements, etc.
Counsels internal clients regarding a full range of IP issues, including patentability, product clearance / freedom-to-practice, protection and use of trade secrets and confidential information, trademark protection and clearance, copyright protection and use, etc.
Conducts patent and trademark searches, analyzes the search results, and effectively communicates relevant advice or information to internal clients
Supports IP-related aspects of M&A activities as assigned
Supports aspects of IP-related litigation, IP-based oppositions, and other disputes as assigned
Develops and delivers IP-related training to internal clients as assigned
Acquires in-depth knowledge of PolyOne’s products and technologies and gains familiarity with relevant products and technologies of PolyOne’s customers, suppliers, and competitors
Works collaboratively with existing IP team, other attorneys and staff within the Legal department, and individuals throughout the global organization from functions including Technology, Marketing, Product Management, Sales, Sourcing, Global Trade, Mergers & Acquisitions, Tax, Finance, etc.
Performs special projects/duties as assigned

Qualifications

To succeed in this position, an individual must be able to perform each job duty satisfactorily and productively. The requirements listed below are representative of the knowledge, skills, and/or abilities required. Reasonable accommodations may be made to address gaps in experience for an otherwise qualified candidate who is willing to learn. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential duties.

In addition to the PolyOne Competencies required for all jobs, the following qualifications are required for this job.

Required Education & Special Qualifications:

Juris Doctor degree from ABA accredited Law School
Bachelor and/or advanced degree(s) in Chemistry, Chemical Engineering, Materials Science, Polymer Science, or similar fields
Licensed to practice law in the State of Ohio (or another state and qualified for corporate counsel registration in Ohio)
Registered to practice before the United States Patent and Trademark Office

Required Length & Type of Experience:

5+ years of intellectual property legal experience, including a balance of patent preparation and prosecution for chemical technologies, IP-related agreements and transactions, and IP-related counseling and opinions
Demonstrated knowledge of or familiarity with all aspects of intellectual property law with a focus in and substantial experience with patents, trade secrets, and confidential information; at least some experience with trademarks is preferred
Demonstrated knowledge of and experience with the Patent Cooperation Treaty and familiarity with patent practice and procedure in Europe (EPO) and China (SIPO)
Experience with polymer technologies is preferred
Experience with a global, publicly-traded organization is preferred

Required Knowledge, Skills & Abilities:

Strong legal, business, and technical acumen
Detail-oriented, motivated, confident, and approachable
Excellent written and oral communication skills, including the ability to interface and communicate effectively at all levels of the organization
Excellent business judgment, problem solving, negotiation, follow-through, and time management (including docket management) skills
Excellent analytical skills, including an ability to review technical information and data to identify patentable subject matter
Exceptional document drafting skills (candidate should be prepared upon request to provide a writing sample including at least one published patent application and at least one publicly available office action response that were principally authored by the candidate)
Ability to provide timely and pragmatic legal advice that guides the business to successful outcomes
Ability to quickly learn and comprehend complex technical subject matter
Ability to function autonomously while possessing sufficient judgment to understand when to seek assistance from or provide updates to management and/or stakeholders
Ability to function in a fast-paced environment and operate efficiently and effectively to manage time pressures and meet deadlines
Ability to take on progressively greater responsibilities
Awareness of cultural differences between the United States and other countries; familiarity with a language other than English is a plus

Competencies

Each position at PolyOne focuses on 12 competencies in the areas of Personal and Strategic Skills as well Thought Rigor and demonstrating an Action Bias. Each position ties to specific competencies and levels of proficiency which help individuals excel at their current role as well as chart their growth path with the company through our Career Planning process.

Scope

This position is global in scope.

Physical/Environmental Demands

The characteristics listed below are representative of the physical and environmental demands required by an individual to successfully perform the essential duties of this position. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential duties.

Requires standing and sitting for prolonged periods of time, talking, listening, and thinking
Typical work is in an office environment where the noise level is low to moderate

Equal Opportunity Employer

We offer a competitive salary, incentive and benefit plan to eligible employees. Benefits include medical, dental, vision, life insurance, disability, spending accounts, and 401(k).

PolyOne Corporation is a drug free workplace. PolyOne is an equal opportunity employer. We maintain a policy of non-discrimination in providing equal employment to all qualified employees and candidates regardless of race, sex, sexual orientation, gender identity, age, color, religion, national origin, disability, genetic information, protected veteran’s status, or other legally protected classification in accordance with applicable state and local law. *LI-BS1

Contact
Apply online by visiting this link: https://polyone.referrals.selectminds.com/jobs/intellectual-property-associate-counsel-1289. Writing samples (published patent application and publicly available office action response) upon request.

Additional Info
Employer Type: Law Firm
Job Location: Cleveland, Ohio

Patent Attorney / Agent – Small Law Firm – Ithaca, N.Y.

September 19, 2018- US - Northeast, Emp - Law Firm, Tech - Biotech, Tech - Computer Science, Tech - Electrical, Tech - Mechanical, Work - Licensing / Other Corporate, Work - Patent Prosecution

Brown & Michaels, PC is seeking a registered U.S. patent attorney with 3+ years of patent preparation and prosecution experience. Our work includes patent prosecution, trademarks and opinion work. We work with of-counsel firms for all litigation work. Our ideal candidate would have a computer science or electrical engineering and significant patent preparation and prosecution experience, but we are less concerned with a specific technical background than the variety and quality of the patent prosecution experience.

Patent Attorney/Agent – Law Firm – Nagoya, Aichi, Japan (Updated)

August 10, 2018- Asia, Emp - Law Firm, Tech - Chemical / Pharma, Tech - Computer Science, Tech - Electrical, Tech - Mechanical, Work - Licensing / Other Corporate, Work - Patent Litigation, Work - Patent Prosecution

OKADA PATENT AND TRADEMARK OFFICE P.C. , a leading Japanese intellectual property law firm in Nagoya, Japan, seeks a US patent attorney or agent to fill a position which will be vacant. The position is for two days work per week except national holidays. Salary is negotiable based on experience. The successful candidate will work at our office in Nagoya, Japan.

Patent Attorney – Law Firm – Portland, Ore.

July 29, 2018- US - Northwest, Emp - Law Firm, Tech - Electrical, Work - Licensing / Other Corporate, Work - Patent Prosecution

Chernoff Vilhauer is seeking a Patent Attorney. Candidate must be USPTO licensed. We prefer at least 3 years of substantive experience drafting applications and office action responses. Technical background in metals, hydraulics, or electrical engineering preferred but not required.

Search Trainer – Small Corporation – Detroit, Mich.

July 29, 2018- US - Midwest, Emp - Corporate (in-house), Tech - Any / Other, Tech - Chemical / Pharma, Tech - Electrical, Work - Intellectual Property, Work - Licensing / Other Corporate, Work - Patent Prosecution

CPA Global is seeking a Search Trainer who is responsible for content development, delivery of live and recorded training sessions, and achieving training department objectives for contractual and internal quality metrics. Leads training staff and supports quality assurance personnel to align training activities with business needs and deliverables. Provides training support for patent classification, Patent Cooperation Treaty examinations, and commercial searching. Leads and manages library team member.

Responsibilities:

Develop patent search and patent classification content.
Deliver live and recorded training sessions.
Utilize metrics to ensure alignment of training department functions and customer needs.
Monitor and schedule training workloads in addition to review and analysis of monthly quality reports to provide targeted training to employees in close coordination with the Director of Quality.
Responsible for coordination of training delivery based on quality review metrics.
Monitor quality and deliver targeted training as required by individual or group performance.
Work closely with India-based training team to support training of US and EMEA Commercial Search teams.
Collaborate with corporate management and foreign and domestic training teams to ensure consistent documentation and adherence to operational processes/procedures between delivery centers, including standard operating procedures, quality procedures, and training initiatives.
Continually review processes and procedures to recommend changes and improve efficiencies.
Responsible for training team members to ensure content development is delivered in a consistent and effective manner.
Plan and lead training activities for commercial and government search groups.
Responsible for the leadership, management and mentorship of team members.
Lead and support library team member in management of domain-specific database systems, contracts, IDs, vendor relationships.
Conduct performance reviews of direct reports and manage performance issues effectively including annual reviews.

Experience Required:

Bachelor’s or advanced degree in an engineering or science discipline and four or more years of relevant work experience, or equivalent combination of education and experience.
One year of previous supervisory experience is required.
Advanced written, oral and verbal communication skills
One or more years of Patent search, examination, classification, or patent prosecution experience
Proven ability to teach, lead, mentor, manage and develop team members
Ability to obtain US Government public trust clearance within 30 days of hire
Strong decision-making skills with an ability to effectively prioritize and delegate work
Subject matter expert in patent search and classification
Must be a proactive, team-focused individual contributor and leader
Strong attention to detail
Brand champion who displays role model-level leadership qualities
Acts as a champion of the company and supports senior leadership decisions
Strong knowledge of patent law as well as search databases to support staff and client requests

Contact
To apply, please email us at: mfath@cpaglobal.com.

Additional Info
Employer Type: Small Corporation
Job Location: Detroit, Michigan

Patent Attorney – Large Corporation – Belmont, Calif.

July 17, 2018- US - Silicon Valley & SF, Emp - Corporate (in-house), Work - Licensing / Other Corporate, Work - Regulatory

Volkswagen Group of America is seeking a Patent Attorney. Work on a wide range of intellectual property issues with the Assistant General Counsel, Intellectual Property & Litigation on the implementation of patent administration process at VWGoA, with a focus on the development of a portfolio for innovations originating from VW’s Engineering Research Lab in Belmont, CA, and Engineering & Planning Center in Chattanooga, TN. The attorney will draft and prosecute patent portfolio applications relating to autonomous vehicle technology, mobile applications, connected cars and related future automotive technology. The attorney will work closely with engineers to help analyze the patentability of inventions, search for related inventions, prepare and help prosecute patent applications at the USPTO, aid in assessing infringement risks for new products and help guide the development of new products. The patent attorney will interact with the Patent Departments of AUDI AG, Porsche AG and Volkswagen AG for coordination of US activities to assist in implementing a VW Group-wide global patent strategy. The attorney will also review and assist in drafting non-disclosure, research, joint development, license and other agreements involving use, transfer and ownership of intellectual property.

Role Responsibilities

Draft patent applications and coordinate filings (as necessary with outside counsel) and interact with the patent departments for Volkswagen AG, AUDI AG and Porsche AG
Counsel engineers and other technical personnel regarding patentability, patent procedure, portfolio strategy and related issues and design and conduct on-site trainings for them
Help develop and implement strategy and procedures for patent management at VWGoA
Review projects for inventions or ideas for potential patent filings, including assist with prior art searches and preparation of invention disclosures
Conduct patentability and freedom-to-operate reviews
Review and assist in the drafting of nondisclosure, research, license, and other agreements involving the use, transfer, or ownership of intellectual property
Coordinate with financial and accounting departments in U.S. and Germany regarding billing and reimbursement issues, where applicable
Implement record-keeping and other appropriate administrative procedures to support patent strategy
Other patent-related support as directed by VWGoA OGC or by the patent departments of Volkswagen AG, AUDI AG or Porsche AG

Years of Experience

7-10 years of experience as a registered United States patent attorney, with an emphasis on current developments relating to electrical and telecommunications technologies deployed in passenger vehicles.

Education-Required

Juris doctor degree from an ABA-approved law school
Bachelor’s degree in electrical engineering, or related field, with an excellent understanding of vehicle related technical subject matter
Registration Number to practice before the United States Patent & Trademark Office

Education-Desired

Post-graduate degree in electrical engineering
Technical expertise in electrical innovations deployed in vehicles

General Skills

Highly detail-oriented, efficient with time and priority management and strong organizational skills
Excellent decision making, problem solving skills, technically proficient
Excellent verbal and written communication and presentation skills
Proficiency with Microsoft Office Products (Word, Excel and PowerPoint)
Innovative, self-starter and highly independent
Strong inter-personal skills, ability to collaborate in a team environment on engineering topics

Specialized Skills-Required

Admitted to practice before the California Bar
Registered to practice at the United States Patent & Trademark Office
7-10 years of industry or law firm experience
Technical ability commensurate with a Bachelor’s degree in electrical engineering, or related field, with an excellent understanding of vehicle related technical subject matter
Significant experience in drafting patent applications and prosecuting such applications with PTO
Verbal and written communication skills
Strong problem solving skills and ability to think analytically and conceptually
Resource management

Specialized Skills-Desired

Influencing and negotiation skills
Experience with an automotive company, supporting patent prosecution functions.
Integration skills – ability to join people, processes or systems
Experience mining innovations in a research and development organization to build IP portfolio assets
Proficient understanding of patent issues outside the United States

Work Flexibility

Travel approximately 35%

We are proud to be an EEO employer M/F/D/V. We maintain a drug-free workplace and perform pre-employment substance abuse testing.

Contact
To apply, please send a resume and cover letter to: Ellen.Catlett@vw.com.

Additional Info
Employer Type: Large Corporation

U.S. Patent Attorney – Law Firm – Nagoya, Japan

May 11, 2018- Asia, Emp - Law Firm, Tech - Electrical, Tech - Mechanical, Work - Licensing / Other Corporate, Work - Patent Litigation, Work - Patent Prosecution

Nagoya International Patent Firm is a leading Japanese intellectual property firm located in Nagoya, Japan. We are seeking a U.S. patent attorney having a Juris Doctor (J.D.), admitted to a state bar, and registered to practice before the U.S. Patent and Trademark Office. In general, the job will entail reviewing U.S. applications and providing advice on claim drafting and prosecution tactics. The job will also include providing opinions concerning U.S. patents, providing advice/support on litigation and transactional matters, updating our firm’s attorneys on current U.S. practice and legal decisions, providing general advice concerning copyright/trademark matters, and other legal advice.