The Law Offices of Albert Wai-Kit Chan, PLLC have an opening in their 2-Year Apprentice Program. $50-75K per year, commensurate with experience. No guarantee of full-time/associate position at end of program. Learn and practice patent law, other IP law and general law. Types of cases will vary depending on client and firm needs. Competitive benefits package.
Patent Attorney – Large Corporation – Parsippany N.J.
Evonik Industries is seeking a Patent Attorney to work in its Parsippany, New Jersey, offices. Under general supervision and direction of the Director Intellectual Property Management North America, the successful candidate will function as a patent practitioner for Evonik's Chemicals, Pharma Services and Polymer businesses in the North American Region and directly interface with business and technical teams from several business divisions in North America, as well as coordinating with in-house Evonik IP counsels.
The Incumbent will coordinate intellectual property activities for Chemicals, Pharma Services and Polymer businesses, including all aspects of legal protection for patents, trade secrets, domain names and software developed by Evonik Corporation. Will have to draft and prosecute patent applications in the U.S., and oversee the prosecution of corresponding worldwide patent applications. Another aspect of the Incumbent responsibility of the Incumbent will be the drafting and negotiating of IP contracts, such as non-disclosure, research, development, joint development, license agreements, etc. and to promote and maintain the principles of and responsibilities related to Responsible Care within his/her assigned areas of responsibility and as defined in the RC 14001 management system.
Responsibilities
- Responsible for analyzing, protecting, and expanding the company’s intellectual property (IP) assets.
- Responsible for filing and prosecuting patent applications at US-Patent and Trademark Office (USPTO).
- Responsible for drafting and negotiating of IP contracts, such as non-disclosure, research, development, joint development, license agreements, etc.
- Provide for preparation of and/or responsible for writing patent applications to leverage company’s IP position and assets.
- Provide for analyses and monitoring of new technologies to avoid patent invalidity and infringement.
- Provide for and direct outside counsel in rendering opinions on patent invalidity and/or infringement.
Requirements
- BS in chemistry required (MS and PhD in chemical or chemical engineering preferred).
- Attorney must possess law degree from an ABA accredited university and be admitted to a state bar (preferably New Jersey and New York).
- Admitted to practice in the United States Patent and Trademark Office.
- A minimum of 8 years of experience in filing and prosecution of patents before the USPTO and contract drafting.
- Knowledge of the full range of applicable laws and regulations regarding intellectual property.
- Ability to provide competent legal advice and counsel to business and technical clients on a wide range of intellectual property issues.
What we offer
You will work on exciting and challenging topics together with a team in an ultra-modern, innovative and creative environment. Intensive on-the-job training with expert colleagues guarantees you will quickly become familiar with your duties and perform them independently. Performance related pay and the opportunity for personal and professional development are of course part of the package.
Contact
Apply online at our website: https://career2.successfactors.eu/sfcareer/jobreqcareer?jobId=41399&company=Evonik&username=.
Additional Info
Employer Type: Large Corporation
Job Location: Parsippany New Jersey
Chief Patent Counsel – Large Corporation – Durham, N.C.
The bioMérieux IP Department is a dynamic team engaged in a wide variety of projects at many levels of the organization. The Chief Patent Counsel position is an integral part of that environment where practicality, effective communication and collegiality are necessary components.
The Chief Patent Counsel position will report to the Corporate Director Intellectual Property and will be expected to supervise and manage the U.S. Patent Department(total of 4 people) in protecting the company’s intellectual assets and avoid/mitigate the risk of violating third party intellectual property rights.
The Chief Patent Counsel’s main accountabilities will be to:
- Proactively manage the U.S. Patent Department, including budget (including managing external legal service providers), workload, and developing efficient procedures and processes; proactively interact with patent departments in other countries for a cohesive patent strategy and coordinated, effective work teams
- Coordinate management of existing global Patents portfolio with Business Departement, Legal, Marketing and IP colleagues to align with commercial objectives.
- Conduct analysis for new products and processes, licensed products and processes, and company acquisitions.
- Contribute with senior management, General Counsel, Corporate Director of global Intellectual Property in developing an overall Intellectual Property strategy and advising on potential matters that arise.
- Prepare and prosecute patent applications and develop international portfolios for a technical area of responsibility; Lead the strategy for a technical area of responsibility in compliance with Corporate Intellectual Property process and procedures for the group bioMérieux in monitoring patents and brands.,
- Advise Intellectual Property, Marketing, technical library, communication departments, Research & Development, Legal and Business Development on litigation and conflict or possible litigation and conflicts.
- Negotiate, maintain and obtain technology agreements with third parties (as part of due diligence and acquisitions) and resolve conflicts regarding trademarks and patent designs and ensure compliance with obligations of technology transfer.
- Maintain knowledge and compliance with legislation concerning Patents and case law at an international level.
- Help the Corporate Director Intellectual Property to manage budget dedicated to IP matter in the America’s region and monitors external legal service providers. Submit budget to Intellectual Property global director. Animate the Patents Team by ensuring the development and training of employees.
- Work on transactional matters, including contract review, drafting and negotiation, with a primary initial focus on support of the IP department.
- Foster close communication and effective working relationships with general Legal Department Interpret legal and/or contractual obligations, and advising clients regarding contractual matters.
Required Skills/ Qualifications
Experience:
- 10 + years (patent, trademark or IP experience) experience in a law firm or the legal department of a company, including all aspects of patent preparation and prosecution, legal analysis/opinion work, and significant direct client support.
- Experience in a pharmaceutical or biotechnology company will be a plus for this position.
- At least 5 years of people management experience are required for this position.
- Previous experience in an additional technical field (e.g. software implementation, science technology) will be a plus.
- Working in an international or multicultural environment will be a plus.
Skills and Qualifications:
- Law degree (JD) and admission (in good standing) to a state bar.
- Registration to practice before the USPTO as a Patent Attorney.
- Experience in U.S Reexamination/Post Grant Review, European Opposition, U.S litigation, negotiation.
- Undergraduate, and preferably graduate, degree in life sciences. Knowledge increased in biochemistry and biology (including microbiology, immunology and/or molecular biology),
- Excellent communication skills and credibility so as to interact effectively and influence management at all levels; ability to successfully work within an international company to promote the Patent Department and fully deploy its depth of knowledge and skills to benefit the company.Ability to take responsibility for transactional work, including IP related provisions and negotiation; significant experience in contract interpretation; excellent analytical skills.
- Willingness to travel, including to France approximately once a year, as well as domestically a few times a year.
- Interest in developing the professional careers of the personnel within the IP Department.
- Pro-activity, vision and self-stability are keys to success for this position.
Contact
To apply, please email Anais Clement at: anais.clement@biomerieux.com.
Additional Info
Employer Type: Large Corporation
Job Location: Durham, North Carolina
Sr. Patent Counsel – Large Corporation – St. Louis, Mo.
Sigma-Aldrich is seeking a Senior Patent Counsel needed to backfill a position and support the business. 3-5 years minimum patent prosecution experience, licensing experience, and opinion experience. Must have great communication skills and work well within a team.
Essential Job Functions
- Support and counsel business in making IP decisions
- Patent drafting and prosecution
- Trademark counseling
- Licensing and other agreement work
- Freedom to operate analysis and validity and non-infringement opinions
- Other tasks as needed
Requirements
- Bachelor's in Biology, Molecular Biology, or Biochemistry
- PhD preferred
- JD and bar admission in at least one state, state licensure, 5-7 years of patent prosecution experience, licensing experience, member in good standing in all bars.
Sigma-Aldrich offers a highly motivational and rewarding working environment with attractive salary, benefits, retirement, relocation and incentive packages including tuition reimbursement. Sigma-Aldrich fosters the growth of employees in a culture of respect and dignity with ample opportunity for career advancement.
Local candidates are preferred, but a relocation package is offered for this position.
Sigma-Aldrich is an Equal Opportunity Employer Minorities/Women/Veterans/
Contact
To apply, please visit this link: https://sappwe.sial.com/sap/bc/webdynpro/sap/hrrcf_a_posting_apply?PARAM=cG9zdF9pbnN0X2d1aWQ9NTVEOUJERDdDODg3MTE1MEUxMDA4MDAwOERGN0IzRjMmY2FuZF90eXBlPUVYVA%3d%3d&sap-client=770&sap-language=EN#.
Additional Info
Employer Type: Large Corporation
Job Location: St. Louis, Missouri
Patent Attorney – Law Firm – St. Louis, Mo. (Updated)
Polster, Lieder, Woodruff & Lucchesi, a small Midwestern boutique patent law firm, is seeking highly-qualified, experienced patent attorneys who are registered to practice before the USPTO, have a minimum of 5 years of experience and have a portable book of business of at least $250,000.
Polster, Lieder's practice allows for its lawyers to have a significant amount autonomy and flexibility, including control of your billing rates and when and how much you work. This creates a lower stress work environment.
Further information regarding the firm and its current attorneys can be found at the firm’s website.
Contact
To apply, please email Jonathan Soifer at: jsoifer@polsterlieder.com. (updated)
Additional Info
Employer Type: Law Firm
Job Location: St. Louis, Missouri
Patent Counsel – Large Corporation – Richmond, Va.
Tredegar Corporation is seeking a Patent Counsel who will report to the Company’s General Counsel and be based in the Company’s Richmond, Virginia headquarters. This individual will lead all activities associated with the Company’s intellectual property initiatives. The Patent Counsel will be a strategic partner to the Company’s business units and play a critical part in the Company’s product innovation process, advising design and development teams and business leaders throughout the product life cycle.
Key Responsibilities and Accountabilities
- Manages the Company’s global patent portfolio.
- Counsels the Company’s divisions on intellectual property strategy. Establishes intellectual property policies and procedures that support business objectives.
- Brings and defends patent oppositions, conducts freedom-to-practice and patent validity studies.
- Prepares and files, and supervises outside patent counsel in the filing and prosecution of, U.S. and foreign patent applications.
- Drafts, reviews and negotiates joint development, confidentiality, licensing and other technology-related agreements.
- Monitors competitor’s patents and provides competitive analysis.
- Provides patent litigation support, as needed.
- Conducts due diligence and intellectual property audits to assist and support the Company’s business transactions.
Candidate Profile
- 10+ years of experience as an attorney registered to practice before the U.S. Patent and Trademark Office.
- Significant relevant technical background and experience. Degree in chemistry or chemical engineering and some experience in the polymer field preferred.
- Practical, results-oriented, proactive self starter with superior analytical, research, drafting, organizational and problem-solving skills.
- Ability to prioritize workload based on current needs of the Company.
- Highly regarded for integrity and teamwork.
- Sound legal judgment, as demonstrated by ability to find practical solutions to complex problems.
- Outstanding interpersonal and communication skills, with the ability to work together collaboratively with professionals from across the organization, including engineering, design, sales and marketing.
Contact
To apply, please email Anita de Lorme at: anita.delorme@tredegar.com.
Additional Info
Employer Type: Large Corporation
Job Location: Richmond, Virginia
Director Licensing – Large Corporation – Pleasanton, Calif.
Roche is seeking a Director Licensing to work in its in Pleasanton, California offices.
Responsibilities
- Lead Licensing team, including recruitment, mentoring and management of team members
- Direct all company in- and out-licensing activities
- Define strategy and manage out-licensing of company patents, including creating policies and template programs as needed
- Manage execution of in-licensing opportunities
- Lead negotiations with external partners and recommend deal terms to senior management
- Administer executed licenses, including informing internal stakeholders of ongoing obligations
- Manage relationships with key licensing partners
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. Where a job title is not considered the final definition of who you are, but the starting point.
Qualifications
- PhD in Life Sciences, or BS in Life Sciences with MBA or JD
- 7-10 years experience in Business Development, Patent Management or Transactional Law in Diagnostics, Biotech, Pharma or Life Sciences industry
- Track record of success as evidenced by deal sheet. Solid understanding of In Vitro Diagnostics market
Contact
The next step is yours. To apply online today and to learn about other exciting positions, please go to: http://careers.roche.com and enter Job ID #2509487223 in the “Keyword” box underneath the Global Job Search field or directly at http://www.roche.com/careers/
Additional Info
Employer Type: Large Corporation
Job Location: Pleasanton, California
Corporate Counsel – Large Corporation – Iowa City, Iowa
Kinze Manufacturing is seeking a corporate counsel. Provide legal counsel to Kinze ownership, senior management and business units for the following areas: marketing and advertising, business and commercial transactions, intellectual property, litigation, franchise and distribution, antitrust, real estate, and mergers and acquisitions. Cost-effective management and coordination of counsel retained by Kinze for legal matters.
This position requires the ability to work closely with business units to provide fast, accurate, and business-savvy legal counsel to the company and commitment to Kinze’s Mission Statement and Core Values. Additionally, this position requires vision and a differentiated value proposition for its customers - Kinze business units - with the capability of demonstrating and measuring value to Kinze and Kinze’s bottom line.
Position Duties and Accountabilities
- Manage Kinze intellectual property portfolio, including analyzing, developing and implementing IP strategies and policies; Prepare patent applications and trademark applications; Conduct patent and trademark searches and freedom-to-operate evaluations; Advise and counsel Kinze ownership, senior management and business units on intellectual property acquisition, protection, and enforcement; Counsel senior management, as well as work directly with engineers, to help shape the development of innovative new products.
- Prepare contracts, agreements and other legal documents, and policies for compliance with state and federal law; Perform and manage negotiations of agreements with suppliers, contractors, and partners.
- Advise and counsel Kinze ownership, senior management and business units on matters involving legal interpretation and decisions related to Kinze activities, policy questions and regulations.
- Cost-effective management and coordination of outside counsel retained by Kinze for legal matters, including managing and tracking budgets, evaluation of fees, and case disposition.
- Advise and counsel Kinze ownership and senior management on commercial transactions including the acquisition and disposition of businesses and major assets, and commercial contract disputes.
- Conduct research of state and federal legislation and administrative and court decisions; Research legal problems and make recommendations.
Position Specifications
- Bachelor’s degree in agricultural or mechanical engineering
- Juris Doctorate
- Admitted to practice law in at least one state. Admitted to practice before the United States Patent and Trademark Office
- A minimum of 7 years’ experience in patent and trademark prosecution, litigation and business and commercial transaction. A minimum of 6 years’ experience in department management
- Possess knowledge of related legal fields, litigation, franchise and distribution law, antitrust, real estate, and mergers and acquisitions; Experience with mechanical patent prosecution, contract work and technology licensing as well as intellectual property strategy development and implementation.
- Excellent analytical, writing and problem solving skills
- Ability to manage a large number and variety of mission-critical projects, independently and often in ambiguous environments under deadline pressure; Ability to coordinate the work of others on projects and assign work to and assist less experienced legal professionals or staff.
- Strong skills in Microsoft Word & Excel, Proficient at legal research on Lexis-Nexis, Westlaw and other online legal research platforms
- Basic clerical skills, establishing daily priorities, handling highly confidential information with discretion, maintain control of files of legal matters
- Exceptional written communication and negotiation skills. And oral communication and negotiation skills
- Practical business judgment and strategic thinker, as well as common sense. Highest standards of ethics and professional integrity.
- Ability to operate with substantial latitude in an informal, fast-paced environment. Capacity to envision practical solutions to the complexities of an innovative business model,
- Ability to analyze and present issues in an independent and objective manner that fosters critical evaluation and engenders trust
- Flexibility and willingness to work on a broad variety of legal matters
- Must be resourceful and self-motivated, have ability to work effectively with senior management and meet their requirements as internal clients
Contact
Apply online using this link: http://www.bullhornreach.com/sites/kinzecareers/job/2100130_corporate-counsel-williamsburg-ia.
Additional Info
Employer Type: Large Corporation
Job Location: Iowa City, Iowa
Innovation Counsel – Large Corporation – Alameda, Calif.
VF Corporation is looking for a talented and experienced patent attorney to serve as its Innovation Counsel, sitting in Alameda, CA, but reporting directly to the General Counsel of VF. In this highly visible position, you will support VF’s three Global Innovation Centers (GICs) focused on performance apparel, footwear and jeanswear. The GICs are a dynamic, entrepreneurial and rapidly growing part of VF that are charged with supporting breakthrough, game changing innovations that will lead the apparel, footwear and jeanswear spaces.
We are looking for someone who has a true passion for innovative technology to advance performance apparel, footwear and jeanswear products. You will provide strategic patent and legal advice to the GICs to introduce and protect new and innovative technologies. You will have significant influence on the development and execution of our patent strategy and patent processes. Responsibilities include client counseling, invention development, inventor education, clearance, patentability and landscape analysis and management of the drafting, filing, prosecuting and maintaining of our growing US and foreign patent portfolio. Other responsibilities will include collaborating with business leaders to support innovation transactions and strategic partnerships. The ideal candidate will become embedded with the builders of our newest technologies to encourage the creation and protection of intellectual property to ensure long-term competitive advantage.
Description/Core Responsibilities
- Proactively engage with business partners to identify and examine potential intellectual property opportunities and encourage the creation and protection of intellectual property to ensure long-term competitive advantage
- Formulate, implement and drive a patent strategy for the GICs latest innovations
- Develop, coordinate and review patent research and analysis projects, including prior art searches, competitive intelligence, white space analyses, landscapes, patentability analyses, portfolio analyses, infringement/non-infringement analyses, validity/invalidity analyses and freedom to operate analyses
- Manage the drafting, filing, prosecuting and maintaining of US and foreign patent portfolio
- Set and implement patent policies
- Develop and implement internal systems, processes and innovation technology platform for tracking innovation and intellectual property throughout the organization
- Drive engagement and use of systems, processes and innovation platform across businesses and departments within the organization
- Prepare and negotiate agreements including those related to strategic partnerships, joint development programs, University relations, and employment issues
- Advise on the acquisition, development and commercialization of third party technologies
- Spearhead internal education initiatives and trainings related to IP and processes
- Establish and manage legal budget in support of GICs
Qualifications
Education/Experience
- 5+years of legal experience (with some experience at a law firm) as patent attorney; in-house experience in a large corporate environment preferred
- Juris Doctor and membership in good standing in at least one state bar is required
- A Bachelor’s degree with a technical background
- Registered to practice before the US Patent and Trademark Office (USPTO)
Skills
- Understanding of a wide variety of technology areas including materials science, fabric construction, apparel and footwear manufacturing processes and equipment, apparel and footwear design and construction and electronics.
- Ability to identify effective methods of protecting intellectual property related to the apparel, footwear and jeanswear industries
- Experience in innovation, R&D or a science/engineering/technical field
- Strong communication skills with innovators, technologists and senior business leaders
- Proven track history of supporting innovation
- Experience with developing and implementing IP strategies and conducting freedom to-operate analyses, IP portfolio analyses, competitive analyses, and/or landscape mapping
- Have personally prepared and prosecuted patent applications and managed US patent and foreign patent prosecution
- Experience with IP transactions
- Experience setting and managing a legal budget
- Common sense, great judgment, and a good sense of humor
- Proactive, positive, curious and self-motivated
- Customer-focused with strong interpersonal and communication skills
- Able to work independently while being able to drive collaboration among cross-functional teams
- Self-starter, autonomous, and rigorous team player
- Superior organization and project management skills
- Able to multi-task, manage multiple priorities, and deliver results in a fast-paced environment
- Business deal-making and negotiation acumen
Contact
Apply online using this link: https://vfc.taleo.net/careersection/tnf-corporate/jobdetail.ftl?lang=en&job=R-20150803-0054.
Additional Info
Employer Type: Large Corporation
Job Location: Alameda, California
Patent Agent – Large Corporation – Palo Alto, Calif.
DuPont's Industrial Biosciences (IB), Genencor Technology Center, located in Palo Alto, California has an opening for an experienced U.S. Patent Agent. This is a highly visible, key role within Industrial Biosciences Intellectual Property group which provides an exciting opportunity to work within a team yet self-management independence. An individual well-suited to this position must exhibit vision, integrity, commitment, leadership, self-motivation, maturity and judgment.
The IB Patent Agent has diverse responsibilities including U.S. patent drafting, U.S. and foreign patent prosecution, patent administrative proceedings, IP portfolio strategy, invention development, inventor education, patentability and landscape analysis.
Qualifications
In order to be qualified for this role, you must possess the following:
Requirements
- Advanced degree (M.S. or Ph.D.) and strong background in microbiology, biochemistry, or molecular biology;
- Capability of connecting scientific details of research projects with patentability considerations;
- Minimum 3-5 years of experience in drafting and/or prosecuting Biotech (USPTO TC1600) patent applications as a Registered U.S. Patent Agent;
- Experience working with foreign associates to assist and coordinate filing and prosecution of international patent matters;
- Drafted and filed at least 20 priority patent applications on distinct inventions within the subject matters of USPTO TC1600, during the past 3 years;
- Ability to work independently and proactively with minimal direction;
- Strong organizational skills, keen attention to detail, and ability to multitask and prioritize projects and meet aggressive deadlines;
- Superior communication and networking skills;
- Outstanding writing skills as demonstrated by original writing samples of patent applications, prosecution submissions, memorandums, and other communications.
The following skill sets are preferred by the Legal function
- Ph.D. degree with focus on biochemistry, protein sciences, genetics, microbiology, or other like disciplines;
- Post-graduate R&D laboratory experience for 2 or more years;
- Some law firm experience is a plus;
- Experiences with independently prosecuting large patent dockets;
- Experiences with developing and implementation of IP Strategies, conducting freedom to-operate analyses, IP portfolio analyses, and/or landscape mapping.
- Experience in working with business and technical teams to develop IP strategies for technical programs.
Contact
Apply online at: http://careers.dupont.com/
Additional Info
Employer Type: Large Corporation
Job Location: Palo Alto, California
IP Litigation Attorney – Large Corporation – Wilmington, Del.
DuPont is looking for an IP litigation attorney (0594150721) who will join the DuPont Intellectual Property litigation team with primary focus on patent litigation. A general description of the duties, previously demonstrated experience, expected skills/proficiencies and required qualifications is as follows:
Duties/Responsibilities
• Manage US patent litigation including related post-grant proceedings and other disputes on behalf of the Company for the assigned business. Responsibility for all aspects of litigation and disputes, including responsibility for:
• case development, witness and trial preparation, attendance at key depositions and hearings, engagement with third party neutrals and opposing counsel.
• leading or co-leading cross-functional (e.g., commercial, research/technical, internal and external legal) teams in litigation, alternative dispute resolution, and strategic efforts.
• all aspects of discovery process, including supervising document retention, collection and production processes, electronic discovery processes, etc.
• outside counsel and vendor management, including negotiating fee agreements, creating and monitoring budgets, reporting financial forecasts to internal stakeholders, etc.
• Support strategic efforts for risk assessment, including working with business patent professionals on FTO issues and global IP strategy.
• Provide legal advice to diverse group of highly engaged stakeholders – e.g., commercial, research and other technical stakeholders, and legal and business management teams.
• Partner with legal and non-legal colleagues to address potential disputes in order to avoid litigation.
• Train lawyers and non-lawyers in aspects of litigation related subject matter; act as litigation resource for non-litigation legal colleagues and business.
• Communicate effectively within the organization.
Qualifications
Previously Demonstrated Experience:
• Seeking an individual having a combined minimum of 10 years of patent litigation experience as (1) partner or senior associate at leading law firm with significant patent litigation experience; and (2) an in-house patent litigation professional responsible for significant patent litigations
• Senior level experience in all aspects of litigation – e.g., managing daily activities, taking/defending depositions of key executives, arguing dispositive motions, preparing experts and expert reports, etc.
• Previously demonstrated experience as outside counsel working directly with internal counsel and clients
• Demonstrated ability, experience, and comfort advising and counseling senior executives
• Ability to work effectively with diverse constituency
Expected Skills/Proficiencies
• Subject Matter Expertise: Exceptional skills in all aspects of IP litigation, IP disputes and general litigation matters
• Excellent Communication Skills: Ability to communicate effectively at all levels – e.g., equally comfortable with scientists, sales/marketing and corporate executives
• Teamwork: Team focused and willingness to contribute to highly motivated team of experienced professionals
• Leadership: Ability to lead or co-lead cross-functional team of subject matter experts – i.e., senior research, commercial or corporate executives – in strategic matters
• Accountability/Responsibility: Remaining accountable and responsible for legal matters and legal advice to the business
• Business Focus: Ability to learn all aspects of business and then translate or apply legal or litigation issues to business issues and objectives
Basic Qualifications
• Minimum 10 years’ patent litigation experience
• Juris Doctorate degree from accredited law school
• Admission to state bar
• Biotechnology background preferred but not required
• Admission to the USPTO preferred but not required
Contact
Apply online at: http://careers.dupont.com/
Additional Info
Employer Type: Large Corporation
Job Location: Wilmington, Delaware
Sr. Group IP Counsel – Large Corporation – Mentor, Ohio
Avery Dennison Corporation is seeking a Sr. Group IP Counsel to work in its Mentor, Ohio offices (30 minutes east of Cleveland).
The scope and responsibilities of the position include providing both U.S. and international intellectual property ("IP") services to Avery Dennison’s Materials Group of businesses, focusing on research, development and innovations, joint development efforts, patent preparation and prosecution, trade secret management and protection, potential business acquisitions, IP litigation, IP transactions, and opinions relating to patents, both foreign and domestic. This attorney will work closely with the Global VP of Research & Development and the Global VP of Marketing for the Materials Group of Avery Dennison, and their leadership teams, as a key business partner for the company’s IP and growth efforts. The intellectual properties of Avery Dennison are extremely valuable assets and include patents, trademarks, copyrights and trade secrets. This position is based in the company’s regional office of the Law Department, in Mentor, Ohio.
- In your role as Sr. Group IP Counsel, delivering on these responsibilities is critical to success:
- IP strategy that targets growth and other key market segments, and supports new product innovations.
- Provide a full spectrum of intellectual property legal services including: client counseling; technology development and licensing contracts; and patent protection, surveillance, enforcement, licensing, and litigation.
- Conduct patent novelty, validity and right to market studies and patent and information searches using internal and external resources and vendors, analyzing and summarizing search results.
- Strategic guidance as a business partner integrating legal advice with critical business strategies for product development, joint development efforts, licensing matters, and IP disputes.
- Draft and file patent applications and liaison with inventors and other internal IP lawyers and staff for the information needed to prepare and file patent applications; conduct such drafting and liaison activities.
- Draft and file foreign and PCT patent applications and liaison with inventors, foreign counsel, and other internal IP lawyers and staff for the information needed to prepare and file patent applications.
- Attend to ongoing patent prosecution, including preparing responses to Office Actions received from patent office, foreign and domestic.
- Transaction services include IP agreements such as license agreements, secrecy agreements, joint development agreements, and consulting agreements.
- IP related advice for M&A assessments and negotiations.
- Litigation services include advising the clients regarding potential and pending litigation; selecting and managing litigation counsel and the course of litigation; settlement agreements.
- Client Counseling services include advising on the cost and effective use of intellectual property, and avoiding or reducing the adverse impact of third party intellectual property; counseling on legal issues relating to advertising and promotional programs; counseling on e-commerce issues.
- Leadership responsibilities for the IP team, inspiring a motivated team that engages with outstanding service in support of the global R&D and marketing organizations.
- Strong collaboration skills to engage with and leverage colleagues within the global law department.
- Budget planning, forecasting and management designed to achieve R&D and marketing performance and cost goals.
What You Will Need to Bring to the Team
Avery Dennison has a long history of being a leader in innovation. Your history is important to us. It should include the following:
Education
- Must possess a technical degree, preferably in Chemistry or Chemical Engineering, or a related field.
- Must possess a law degree, be registered with the USPTO, and be a member of the Bar in good standing.
Experience
- Must have at least 10-15 years of patent law experience, including litigation, IP transactional, patent drafting and prosecution, freedom to operate opinions; law firm experience is desirable.
- Familiarity with technologies relating to Avery Dennison’s products and business strategies is a plus.
- Must have the ability to deal effectively with complex legal issues that have both legal and business ramifications, as well as be proficient at defining and implementing new business and law department processes to ensure efficiency and effectiveness.
- Experience with other intellectual property (IP) such as trademark and copyright is useful.
- Must have strong communication and interpersonal skills, with a demonstrated record of collaboration and successfully engaging with global teams.
- A strong working knowledge of and experience with PCT, European patent practice, and China patent practice is highly desirable.
- Highly skilled at drafting patents (patent prosecution).
- Outstanding Client counseling skills is required.
- Must have transactional experience (licensing, JDA, partnering agreements, negotiation experience with universities)
- Litigation experience is highly preferred.
Travel
- Travel to Europe and Asia will be required; approximately 25-35% travel.
Contact
Apply online by visiting this link: https://www.averydennison.apply2jobs.com/ProfExt/index.cfm?fuseaction=mExternal.showJob&RID=11322&CurrentPage=1.
Additional Info
Employer Type: Large Corporation
Job Location: Mentor, Ohio
Patent Attorney – Large Corporation – Santa Clara, Calif.
Intel is seeking a Patent Attorney with wireless expertise to:
- Assist with portfolio management tasks including harvestings, committee meetings and dispositions, quality reviews, outside counsel oversight, notice of allowance and post issuance reviews
- Prosecute selected US and foreign matters
- Counsel inventors on legal questions in areas such as bars to obtaining a patent, patentability and inventorship requirements
- Provide harvestings and trainings to engineers and business units and establish and maintain relationships with key inventors and business units
- And oversee areas of strategic interest and provide substantive feedback to end users in litigation, licensing and analysis.
Key Qualifications
- A Juris Doctor Degree (J.D.)
- Experience: 5+ years of directly relevant experience
- Admission to a state bar for US-based attorneys
- Technical background focused on wireless
The ideal candidate must also demonstrate:
- Excellent problem-solving skills
- Ability to multitask
- Strong written and verbal communication skills
- Ability to work in a dynamic and team oriented environment
Intel prohibits discrimination based on race, color, religion, gender, national origin, age, disability, veteran status, marital status, pregnancy, gender expression or identity, sexual orientation or any other legally protected status.
Contact
Apply online by visiting this link: http://www.intel.com/content/
Additional Info
Employer Type: Large Corporation
Job Location: Santa Clara, California
Patent Engineer / Analyst – Law Firm – Remote
IP Edge LLC is seeking a Patent Engineer / Analyst. Tired of your daily commute? Getting burned out with a billable hour requirement? Want to break into the field of patent monetization? IP Edge has an opportunity for a creative, entrepreneurial spirited IP professional interested in working on patent licensing and monetization.
Qualified applicants must have an undergraduate or graduate degree in a technical discipline, such as engineering or science. Prior work experience is preferred but not required. Ability to perform patent due diligence and technical analysis, review patent-related work product produced by our vendors, prepare infringement claim charts, analyze and respond to invalidity positions, manage outside counsel and vendors, review and edit license agreements, and support IP transactions. The ideal candidate is organized, can multi-task, and works well under pressure.
High performers are rewarded with an annual bonus and promoted up from within the organization. This is a full-time contract position with no benefits. 60k+ annual base compensation, and six figure potential with bonus. We are a small and collaborative group. Remote telecommuting is a perk — you don’t have to come into an office.
Contact
Interested applicants should send their resume to info@ip-edge.com.
Additional Info
Employer Type: Small Corporation
Job Location: Remote
Patent Agent – Large Corporation – Johnston, Iowa
DuPont Pioneer , located in Johnston, Iowa has an opening for an experienced U.S. Patent Agent. This is a highly visible, key role within Pioneer’s Intellectual Property group which provides an exciting opportunity to work within a team yet self-manage independence. An individual well-suited to this position must exhibit vision, integrity, commitment, leadership, self-motivation, maturity and judgment.
The Pioneer Patent Agent has diverse responsibilities including U.S. patent drafting, U.S. and foreign patent prosecution, patent administrative proceedings, IP portfolio strategy, invention development, inventor education, patentability and landscape analysis.
Qualifications
In order to be qualified for this role, you must possess the following:
Requirements
- Advanced degree (M.S. or Ph.D.) and strong background in microbiology, biochemistry, or molecular biology;
- Capability of connecting scientific details of research projects with patentability considerations;
- Minimum 3-5 years of experience in drafting and/or prosecuting Biotech (USPTO TC1600) patent applications as a Registered U.S. Patent Agent;
- Experience working with foreign associates to assist and coordinate filing and prosecution of international patent matters;
- Drafted and filed at least 20 priority patent applications on distinct inventions within the subject matters of USPTO TC1600, during the past 3 years;
- Ability to work independently and proactively with minimal direction;
- Strong organizational skills, keen attention to detail, and ability to multitask and prioritize projects and meet aggressive deadlines;
- Superior communication and networking skills;
- Outstanding writing skills as demonstrated by original writing samples of patent applications, prosecution submissions, memorandums, and other communications.
The following skill sets are preferred by the Legal function:
- Ph.D. degree with focus on biochemistry, protein sciences, genetics, microbiology, or other like disciplines;
- Post-graduate R&D laboratory experience for 2 or more years;
- Some law firm experience is a plus;
- Experiences with independently prosecuting large patent dockets;
- Experiences with developing and implementation of IP Strategies, conducting freedom to-operate analyses, IP portfolio analyses, and/or landscape mapping.
- Experience in working with business and technical teams to develop IP strategies for technical programs.
Contact
To apply, please visit this link: http://careers.dupont.com/jobsearch/job-details/patent-agent/9893150612/.
Additional Info
Employer Type: Large Corporation
Job Location: Johnston, Iowa
Patent Counsel – Large Corporation – San Mateo, Calif.
SolarCity is seeking a patent attorney to join its growing team. The Ideal candidate will be embedded in R&D teams throughout SolarCity as they bring new energy products to market. Some domestic and international travel may be required.
Responsibilities
- Identify and harvest patentable inventions; prepare and prosecute patent applications, manage outside counsel
- Counsel clients, conduct IP training, third-party due diligence, IP landscaping
- Provide legal guidance to SolarCity’s software engineering, system design, and power systems teams, which are based in San Mateo & San Francisco, CA
- Focus on photovoltaic system design and optimization, monitoring and maintenance of energy generation and consumption, solar financing, smart energy storage, and distributed power management
Qualifications
- Juris Doctor and membership in good standing in at least one state bar
- 5+ years of legal experience (with at least 3 years at a law firm) as a patent attorney
- Registered to practice before the US Patent and Trademark Office (USPTO)
- Undergraduate degree in electrical engineering, physics and/or computer science
- Must have prepared and prosecuted at least 40 original patent applications, including a substantial number in the area of (i) semiconductor device physics or (ii) electrical and software-based technologies
- Excellent analytical and interpersonal skills
- Excellent organizational skills, ability to work independently, manage multiple projects at once, follow through, and meet deadlines
- Common sense, great judgment, drive, a passion for solar energy, and a good sense of humor
- Excellent written and verbal communication skills required
- Excellent customer service skills required
- Regular, reliable and predictable attendance required
- Ability to work well with others in a collaborative team environment
- Must be able to successfully pass a pre-employment criminal screen. Additional pre-employment driving and drug screens may be required based on job responsibilities
Benefits for Full-Time Positions
- Competitive compensation with many positions incentivized
- Paid training with the nation’s leader in solar power
- Full benefits package including health, vision, dental insurance
- Attractive vacation, sick and holiday pay
- 401(k) savings plan
- Employee referral program
- Eligibility to receive equity in the company
- Career path opportunities for top performers
SolarCity is an Equal Opportunity / Affirmative Action employer committed to diversity in the workplace. All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, national origin, disability, protected veteran status or any other factor protected by applicable federal, state or local laws.
Contact
To apply, visit this link: https://careers-solarcity.
Additional Info
Employer Type: Large Corporation
Job Location: San Mateo, Fremont, or San Francisco, California
Patent Attorneys – Law Firm – Atlanta, Ga.
Taylor English Duma, an innovative general practice firm with an entrepreneurial compensation structure, ranked as the fastest growing law firm in Atlanta, has openings at various experience levels for registered patent attorneys with any type of mechanical engineering degree. Primary responsibilities include reviewing, preparing, and prosecuting patent applications, with additional exposure to litigation and licensing. Connections in Atlanta are preferred, and the ability to work well with others is required.
Contact
To apply, contact Jeff Kuester at: jkuester@taylorenglish.com.
Additional Info
Employer Type: Law Firm
Job Location: Atlanta, Georgia
Patent Agent – Large Corporation – Raleigh, N.C.
The Red Hat Legal team is looking for a Patent Agent to join our Intellectual Property team at our corporate headquarters in Raleigh, N.C. The primary focus of this role will be to ensure that Red Hat files and prosecutes top-quality, strategic patent applications. You will interface with Red Hat engineers and developers to generate strategic invention disclosures, and assist in managing the quality of patent prosecution work and other patent-related projects performed by outside counsel.
Primary Responsibilities
- Assist senior patent counsel in managing day-to-day operations of Red Hat’s patent program for inventors, including directing outside the counsel's preparation and prosecution of patent applications, and reviewing draft applications, office action responses, and other prosecution documents
- Contribute to Red Hat’s patent-related intranet sites and educational efforts, as well encourage employee participation through training and employee meetings
- Work with Red Hat inventors to develop strategic invention disclosures
- Participate in the Red Hat patent committee to review disclosures and make filing decisions
- Assist other Red Hat intellectual property group members with reviewing patent acquisition opportunities, analyzing defensive capabilities of Red Hat’s patent portfolio, and supporting important third-party patent-related alliances
- Assist with ongoing litigation as needed, as well as patent assurance, patent licensing, and M&A due diligence
Required skills/Experience
- 5+ years of relevant experience in all aspects of patent prosecution practice
- Some in-house patent and technical experience is preferred
- Technical background in software, like a bachelor's degree in computer science or electrical and computer engineering, or programming experience
- Excellent academic credentials from a top-tier college
- Registered to practice before the U.S. Patent and Trademark Office
Contact
To apply, please visit this link: http://jobs.redhat.com/jobs/
Additional Info
Employer Type: Large Corporation
Job Location: Raleigh, North Carolina
Patent Attorney – Naval Research Laboratory – Slidell, La. (Updated)
The Naval Research Laboratory (NRL) is seeking a patent attorney to serve as an Assistant Counsel within the Intellectual Property (IP) law branch of the Office of General Counsel, U.S. Naval Research Laboratory (NRL) within the Office of Counsel, Office of Naval Research. The position is physically located at the National Aeronautics and Space Administration Stennis Space Center near Slidell, Louisiana. This position will serve clients at the NRL detachment located within the NASA/Stennis Space Center (NRL-SSC).
SALARY RANGE:
$97,065.00 to $150,830.00 / Per Year
OPEN PERIOD:
Wednesday, April 8, 2015 to Wednesday, April 29, 2015 (updated)
SERIES & GRADE:
NO-1222-05
POSITION INFORMATION:
Full Time - Excepted Service Permanent
DUTY LOCATIONS:
1 vacancy in the following location:
Stennis Space Center, LA
WHO MAY APPLY:
United States Citizens
SECURITY CLEARANCE:
Secret
SUPERVISORY STATUS:
No
Thank you for your interest in the Department of the Navy's (DON) Office of the General Counsel (OGC). We offer rewarding opportunities to practice law within the Navy legal community.
OGC consists of 718 civilian attorneys, including 55 intellectual property attorneys, plus 29 uniformed Navy JAGs and Marine Corps Judge Advocates, and 198 support staff located throughout the United States and overseas and includes multiple grade levels. Approximately 300 are located in Washington D.C.; the remaining attorneys are located in 95 field offices throughout the country and abroad. Interested applicants should apply following the specific instructions below.
OGC provides advice to the various components and activities that make up the Department of the Navy by offices attached to those components. Civilian Navy OGC attorneys help clients address legal concerns in virtually every area of the law related to business, including government contracts, public employment ethics, environmental concerns, personal and real property law, fiscal issues, and intellectual property law. There are numerous benefits of being an OGC attorney:
•You'll have an immediate opportunity to directly serve clients assigned to you on significant matters.
•You'll have a clear opportunity to advance so that your skills increase, and
•You'll enjoy a sense of satisfaction from meaningful service.
Contact
For the full details on the position and to apply, please visit this link: https://www.usajobs.gov/GetJob/PrintPreview/399710200.
Additional Info
Employer Type: Government
Job Location: Slidell, Louisiana
Patent Attorney – Large Corporation – Tarrytown, N.Y.
Regeneron, a leading science-based biopharmaceutical company, is seeking an attorney who will help to develop strategies for expanding its patent portfolio around key molecules, platforms and other technologies to ensure its long-term competitive advantage.
The attorney will also advise on emerging legal issues, including monitoring and reviewing case law and legislative developments, and be expected to contribute to administrative and legal projects intended to develop an IP Department displaying the highest legal and ethical standards.
Responsibilities
- Conducting strategic IP due diligence, including analyzing Regeneron’s IP portfolio as well as the portfolios of our competitors and potential collaborators;
- Identifying opportunities for expanding Regeneron’s IP position;
- Contributing to the negotiation and drafting of license, collaboration and other IP agreements; and
- Working closely with Regeneron’s scientists and patent prosecution attorneys to identify and track new inventions and technologies.
Requirements
- Exceptional communication skills, including presentation, interpersonal, writing and conflict resolution.
- Ability to independently oversee legal matters, manage the use of outside legal counsel and work collaboratively with other personnel at Regeneron.
- Ability to set aggressive deadlines, handle multiple complex legal matters and see projects through to conclusion.
Education and Experience
- Juris Doctorate and admitted to practice in at least one state, New York preferred.
- 4-7 years’ in-house and/or law firm experience.
- Ph.D. in biological sciences required, immunology a plus.
- Registered to practice before the US Patent and Trademark Office.
- Ideal candidate will have a broad range of patent-related legal expertise. Experience in patent preparation and prosecution, IP due diligence and strategic counseling required. Experience in licensing, patent litigation and drug regulatory affairs a plus.
This is an opportunity to join our select team that is already leading the way in the Pharmaceutical/Biotech industry. Apply today and learn more about Regeneron ís unwavering commitment to combining good science & good business.
To all agencies: Please, no phone calls or emails to any employee of Regeneron about this opening. All resumes submitted by search firms/employment agencies to any employee at Regeneron via-email, the internet or in any form and/or method will be deemed the sole property of Regeneron, unless such search firms/employment agencies were engaged by Regeneron for this position and a valid agreement with Regeneron is in place. In the event a candidate who was submitted outside of the Regeneron agency engagement process is hired, no fee or payment of any kind will be paid.
Regeneron is an equal opportunity employer and all qualified applicants will receive consideration for employment without regard to race, color, religion, sex, national origin, sexual orientation, gender identity, disability status, protected veteran status, or any other characteristic protected by law.
Contact
Apply online by visiting this link: http://jobs.regeneron.com/
Additional Info
Employer Type: Large Corporation
Job Location: Tarrytown, New York