IP Associate – Law Firm – Atlanta, GA

May 7, 2021- US - MidAtlantic and South, Emp - Law Firm, Work - Patent Litigation

Miller & Martin, a leading Southeastern law firm, is seeking an IP associate for their Atlanta, GA offices.

Junior Attorney – Law Firm – Frankfurt, Germany (U.S. Firm)

April 30, 2021- Europe, Emp - Law Firm, Tech - Electrical, Tech - Mechanical, Work - Intellectual Property, Work - Patent Litigation, Work - Patent Prosecution

Leydig, Voit & Mayer is seeking a U.S. patent attorney with 1–4 years of experience to be an associate in its Frankfurt, Germany office.

Successful candidates will be authorized to practice in at least one state of the United States and before the U.S. Patent & Trademark Office. Candidates should have a demonstrated track record of academic achievement, excellent interpersonal skills, and a mechanical engineering, electrical engineering, or physics degree. German language proficiency is a plus, but not required, as the working language of the office is English.

As an associate at Leydig, Voit & Mayer, you will experience a collegial and supportive environment that challenges your technical knowledge and improves your legal skills. Typical work activities include: U.S. patent prosecution, analysis and preparation of patent opinions, drafting agreements related to technology licensing and associated transactions; and support of litigation, administrative reviews, petitions, and appeals. Preferred candidates will have experience in at least some of these areas.

Leydig, Voit, and Mayer is a U.S. law firm with offices throughout the United States, as well as international offices in Germany and China. The firm has been at the forefront of intellectual property law for more than 100 years and enjoys an international reputation for excellence in all areas of intellectual property practice, including holding a Tier 1 ranking in Patent Law from U.S. News and World Report. The firm is committed to mentoring and associate development and offers an open-door environment in which you can seek assistance from anyone in the firm. Associate compensation begins at $160,000 and is adjusted based on experience and qualifications. Additionally, associates based in the Frankfurt office receive an ex-pat package, including additional travel benefits for travel back to the U.S.

Leydig offers equal employment opportunities to all qualified persons without regard to race, color, religion, sex, national origin, ancestry, age, sexual orientation, gender identity or expression, pregnancy, physical or mental disability, medical condition, military or veteran status, genetic information, marital status, or any other protected status in accordance with all applicable federal, state and local laws.

As a provider of legal services to U.S. government agencies, Leydig participates in the E-Verify program.

Candidate submissions for the Frankfurt associate position should be e-mailed to lawcareers@leydig.com and include: a cover letter indicating why you are interested in the position; your resume; at least one writing sample, preferably relevant to patents (e.g., Office Action responses, appeal briefs, etc.); and certified or uncertified copies of undergraduate and law school transcripts, as well as graduate school transcripts if applicable.

Additional Info
Employer Type: Law Firm
Job Location: Frankfurt, Germany (U.S. Firm)

IP Litigation Associate – Law Firm – Portland, OR

April 27, 2021- US - Northwest, Work - Patent Litigation

Schwabe, Williamson & Wyatt ‎has an opening in its Portland, Oregon office for a full time Intellectual Property Litigation Attorney in the Intellectual Property practice group.

Litigation Associate – Law Firm – Florham Park, New Jersey

April 18, 2021- US - Northeast, Emp - Law Firm, Tech - Chemical / Pharma, Work - Patent Litigation

Pergament & Cepeda LLP, a small but rapidly growing life sciences and IP law firm in Morris County, NJ is looking for a litigation associate. The firm represents corporate pharma clients in ANDA litigation. The firm also represent patent plaintiffs in patent contingency litigation.

Associate Attorney – Law Firm – Multiple Locations

April 15, 2021Emp - Law Firm, Work - Intellectual Property, Work - Patent Litigation

Tucker Ellis is seeking an Intellectual Property Litigation Associate with approximately 4-6 years of experience. The firm’s nationwide practice will provide the candidate with an active and multi-faceted experience in Intellectual Property litigation, especially trademark enforcement, domain name, and cybersquatting matters.

Intellectual Property Litigation Associate – Law Firm – Palo Alto, CA

April 12, 2021- US - West, Work - Intellectual Property, Work - Patent Litigation

Duane Morris LLP has an opening for an associate with 2-5 years’ experience in IP litigation to join its growing Intellectual Property Practice Group in its Silicon Valley office. Ideal candidate must have strong academic credentials, superior writing ability, a quick-study aptitude and the ability to engender client confidence and thrive in a creative, entrepreneurial and collegial environment. California bar admission required; technical background preferred but not required. EOE/AA/M/F/D/V.

Patent Litigator – Corporation – Remote

April 8, 2021- US - Telecommute, Emp - Corporate (in-house), Tech - Chemical / Pharma, Work - Licensing / Other Corporate, Work - Patent Litigation

The cannabis industry is one of the fastest growing segments of the economy, and intellectual property (IP) is becoming an increasingly important element for the sustained growth of the industry. The future of IP development, transactions, licensing, and litigation for the cannabis industry is now being established, and tremendous opportunity exists for experienced IP practitioners to establish themselves as leading figures and thought leaders in the cannabis industry.

The Company has an industry leading patent portfolio and growth strategy and is seeking a patent litigator with at least six years of patent litigation and PTAB experience. The selected candidate will directly handle day-to-day case and licensing demands in the fast-growing cannabis and hemp industries. This requires an entrepreneurial spirit and someone with a wide range of technical, legal, and business development and negotiation skills. This role will provide the candidate with an opportunity to be at the forefront of patent enforcement for the cannabis industry.

Job Summary:

Initiate, defend, and manage post issuance patent proceedings such as post grant reviews, inter partes reviews, oppositions, and patent litigation.

Handle all phases of litigation: pleadings, discovery, depositions, motions practice, hearings, pre-trial and trial, mediation, settlement. Establish and develop streamlined SOPs for all patent proceedings.

Participate in: acquisition and licensing negotiations in both contentions and non-contentious settings; licensing campaigns; due diligence; and the drafting, reviewing, and negotiation of agreements covering intellectual property rights.

Proactive and resourceful, with ability to effectively manage multiple priorities, deadlines, ambiguity, and operating in novel situations.

Assist in identifying potential assets for acquisition and licensing, international patent prosecution and portfolio management, patent drafting, IP audits, idea generation and harvesting, and IP partnership tasks with select partners.

Requirements:
Generally, at least six years of patent litigation experience, we welcome applicants with substantially more experience.

Registration to practice before the U.S. Patent and Trademark Office and the ability to handle IPRs and IPR defense.

Bar membership in good standing in your state of residence with preference given to those licensed to practice in Oregon, California, and/or Colorado.

Scientific degree(s), with a preference for organic chemistry, engineering, and/or physics. Formulation, pharmaceutical, and chemical expertise is appreciated, including botanical extraction (e.g., water, ethanol, Co2, hydrocarbon solvent-based techniques). Cannabis and hemp-specific experience is appreciated, but is not required.

Apply via email to:
PatLitResume@gmail.com

Additional Info
Employer Type: Small Corporation
Job Location: Remote

Associate Patent Attorney – Law Firm – New York, NY

April 5, 2021- US - NYC, Work - Patent Litigation, Work - Patent Prosecution

MG Miller – one of New York’s most exciting, up-and-coming intellectual property boutique law firms – is looking to add a new Associate Patent Attorney to assist with the firm’s patent work.

MG Miller was founded in Manhattan in 2016. Since that time, the firm has grown its client base to over 300 clients spread across 5 continents. The firm’s clients range from individual inventors working out of their garage, to serial entrepreneurs rolling out a new venture, all the way to multi-million dollar companies that have been around for decades.

MG Miller focuses on emerging markets and other high-growth industries, leveraging their expertise in the cannabis, artificial intelligence/machine learning, and 3D printing spaces. MG Miller has an excellent track record of helping their clients develop and enforce their intellectual property.

In addition to the work MG Miller has done for their clients, founding attorney Matt Miller has gone to great lengths to create a vibrant work culture that breaks from the mold of traditional law firms. While many firms tout their “quality of life” as being a perk, the positive firm culture at MG Miller is more than just a tag line – MG Miller places a strong emphasis on personal and professional growth of all of its staff members. To that end, there are no billable hour requirements for the attorneys.

While maintaining quality of life is important, we also seek candidates who are passionate about their work and care about doing a thorough, high-quality job. MG Miller firmly believes that this does not necessitate 15-hour days; instead, the expectation is that their attorneys will leave no stone unturned to try to get the best result for each client. Successful candidates will have a strong attention to detail, be thorough in their work, and have strong interpersonal skills.”

Primary Responsibilities:

Conduct (with supervision) all aspects of patent drafting and prosecution, for both utility and design patents
Perform legal research
Draft enforcement letters against infringement
Prepare written opinions, such as patentability and freedom-to-operate opinions
Draft IP-related agreements
Counsel clients on how to establish or expand their patent portfolios

Requirements/Qualifications:

1-3 years of intellectual property experience in private practice or as a patent examiner with the USPTO
Admitted to practice before the USPTO
Admitted to at least one state bar, with a strong preference for candidates who are admitted to the New York and/or New Jersey state bars
Strong attention to detail
Technologically adept, particularly with Microsoft Office
Highly motivated and organized

To apply for this position, please follow the instructions at https://mgmiller.legal/careers-mgmiller

Additional Info
Employer Type: Law Firm
Job Location: New York, NY

Patent Analyst – Litigation Finance – Chicago, IL

March 22, 2021- US - Midwest, Tech - Computer Science, Tech - Electrical, Work - Licensing / Other Corporate, Work - Patent Litigation

Burford Capital is the leading global finance and asset management firm focused on law. Its businesses include litigation finance and risk management, asset recovery and a wide range of legal finance and advisory activities. Burford is publicly traded on the New York Stock Exchange (NYSE: BUR) and the London Stock Exchange (LSE: BUR), and it works with companies and law firms around the world from its principal offices in New York, London, Chicago, Washington, Singapore and Sydney.

The Firm has created a Patent Analyst position on the patent team. The patent team is responsible for originating, underwriting, and managing Burford’s patent-focused investments. The Patent Analyst will provide support to the patent team, including patent underwriting and patent business development personnel, to review and analyze potential patent-related investments. This is an excellent opportunity for an ambitious individual to join an exciting and growing business in a unique role that sits at the intersection of technology, law, and finance.

The role will report to a Director at Burford responsible for underwriting and managing the firm’s patent investments and be based in Burford’s Chicago offices.

Company Overview:

Burford Capital is the largest and most experienced provider of commercial finance to the legal sector in the world, with a core expertise in identifying and optimizing the value of legal assets for companies and law firms. Since its founding in 2009, Burford has worked with hundreds of law firms and corporations, including 93 of the AmLaw 100 and 89 of the Global 100 largest law firms. Our team has grown from five people at the end of 2009 to over 130 people today, including some 60 lawyers.

Burford possesses the resources and expertise of a large company while retaining the flexibility and creativity of a startup. Team members are smart, creative, collaborative, curious, and confident. Everyone rolls up their sleeves to perform and engage collectively for the overall success of the business. Burford values rigorous thinking, clear communication, and efficient execution.

Burford pays base salaries consistent with the financial services industry and favors incentive compensation to reward performance. US ONLY: Burford provides competitive health care benefits and a 401k matching program. Burford Capital is committed to increasing diversity and maintaining an inclusive workplace culture. We welcome applications from all qualified candidates regardless of their ethnicity, race, gender, religious beliefs, sexual orientation, age, marital status, whether or not they have a disability.

Position Requirements:

Review and analyze patent claims, patent specifications, and patent file histories
Learn about and become the internal expert on various patented technologies
Perform patent validity analysis, including review of prior art patents and other technical documents
Perform patent infringement analysis, including review of claim charts and related technical documentation
Review and analyze materials related to patent litigation damages
Collaborate with patent team regarding litigation strategy
Conduct research on various patent investment-related topics, including patented technology, potential litigants, counsel, courts and judges, and financial information
Interface with potential counterparties (including law firms and corporations) to gather, organize, and analyze investment diligence materials
Create written work product summarizing and making recommendations on assigned tasks
Work closely with patent underwriting and patent business development teams throughout the investment lifecycle.

Skills Desired:

Qualifications & Experience

An undergraduate degree in an engineering or science discipline (computer engineering, electrical engineering, or computer science preferred). A graduate degree in engineering or science is also preferred but not required
A minimum of 3 years of experience performing substantive patent analysis, either as a Patent Agent, a technical specialist, an in-house advisor, or otherwise
Strong aptitude for learning and understanding new technologies
Deep understanding of the U.S. patent system
Experience directly supporting patent litigation is strongly preferred
Proficiency with any or all of Docket Navigator, Lex Machina, PACER, and USPTO PAIR a plus.

Core Competencies & Skills

An analytical thinker, able to deconstruct and analyze complex issues.
An efficient communicator, capable of explaining complex issues and describing them in plain language.
Proficient with general science and engineering concepts.
Practical and deal-minded, with a focus on providing commercially reasonable guidance and solutions to colleagues and managers.
A multi-tasker, capable of actively managing and prioritizing several projects concurrently.
A self-starter, capable of taking initiative and proactively adding value to Burford’s underwriting and business development processes.
A team player who can work collegially with team members at multiple levels and across various business functions.
Professional demeanor, pleasant manner, and patience in all interactions internally and with potential counterparties.
Ambitious and the desire to both hone existing skills and learn new skills.

Summary:

The Patent Analyst will join the patent team and play an integral role in analyzing patent-related investment opportunities and further enhancing the firm’s patent-focused capabilities. This role is located in our Chicago office and will report to a Director on the patent team also located in Chicago. This is a unique position that sits at the intersection of technology, law, and finance, and correspondingly requires a unique blend of skills. The ideal candidate will possess strong technical acumen and a deep understating of the U.S. patent system, as well as an ability to apply these skills in a practical, deal-focused investment setting. Also critical to this role are efficient communication skills and a collegial approach to work. This is an excellent opportunity for an ambitious candidate seeking a fast-paced work environment and the opportunity for substantial growth.

Apply online at:
https://www.burfordcapital.com/about-burford/careers/

Additional Info
Employer Type: Other
Job Location: Chicago, IL

Patent Litigation Associate – Law Firm – Orland Park, Illinois

March 19, 2021- US - Midwest, Emp - Law Firm, Work - Patent Litigation

Nelson Bumgardner Albritton P.C. (NBA), a boutique patent litigation firm, is actively seeking a full time litigation associate for its Orland Park, IL office. NBA is a nationally recognized litigation and appellate law firm based out of Fort Worth, TX.

PhD Biotechnology Patent Agent – Law Firm – Remote

March 10, 2021- US - Telecommute, Emp - Law Firm, Tech - Biotech, Tech - Chemical / Pharma, Work - Patent Litigation

McBee Moore & Vanik IP, LLC is seeking a remote PhD Biotechnology Patent Agent. We particularly seek candidates with a demonstrated track record of drafting and prosecuting patent applications for innovative biotech, pharmaceutical and/or chemical corporations.

Patent Associate – Law Firm – Denver, CO, Salt Lake City, UT, or Seattle, WA

March 9, 2021- US - Northwest, - US - Southwest, Work - Other Patent, Work - Patent Litigation

Dorsey’s Patent group is seeking an associate with two to three years of experience and a technical background in electrical engineering or computer science to be based in Seattle or Denver. You will join an exceptional team of attorneys, agents, paralegals, and staff servicing a wide array of clients – from large multinational corporations to entrepreneurs and innovative startup companies. You will have responsibility for an active docket of patent prosecution matters – from drafting applications through all phases of domestic and foreign patent prosecution. You will have the opportunity to counsel clients on patent strategy, and gain exposure to conducting searches and preparing patentability, invalidity, and non-infringement opinions. In our general practice firm, there are also opportunities to support litigation and transactional practices.

Dorsey’s patent group includes a diverse team of 35 Patent attorneys and 5 agents and technical advisors spread across five of Dorsey’s offices (Denver, Minneapolis, Palo Alto, Salt Lake City, and Seattle) who advise clients around the world on developing domestic and international intellectual property portfolios; conducting patent prosecution, including reexamination, reissue, and foreign filings; preparing patentability, validity and infringement opinions; supporting intellectual property commercialization and technology transfers; and performing M&A intellectual property due diligence. We are supported by a talented and dedicated team of paralegals and legal staff.

The following qualifications are required:

USPTO admission
Two to three years of patent attorney or agent experience
B.S. and/or M.S. in Electrical Engineering or Computer Science, or a B.S. in Engineering with relevant technical Electrical Engineering or Computer Science work experience
Strong academic performance and writing ability

Preferred candidates will thrive in a fast-paced, client-centric team where they enjoy a significant amount of responsibility for seeing matters through to completion.

Colorado bar admission preferred for Denver candidates. Washington bar admission preferred for Seattle candidates.

In addition to submitting your cover letter, resume and transcript with your application, please also submit a patent prosecution writing sample.

Dorsey offers opportunities for advancement within a collaborative and dynamic environment, competitive salary, and excellent benefits. Our benefits include comprehensive medical, dental, and vision insurance; domestic partner benefits (for same-sex and opposite-sex domestic partners); Dorsey & Whitney 401(K) Retirement and Savings Plan; 15 weeks of paid parental leave, plus an additional 6-8 weeks of paid short-term disability for lawyers who give birth; adoption assistance; back-up child care program; education and college advising programs; well-being programs and activities; a 24/7 employee assistance program with confidential counseling; and more!

Dorsey values the strength that comes from a diverse and inclusive work environment. It contributes to the success of our people and our clients and enriches our experience. We believe that everyone should feel at home and part of our community.

You will receive consideration for employment without regard to race, color, creed, religion, ancestry, sex, national origin, sexual orientation, gender identity, affectional preference, disability, age, marital status, familial status, status with regard to public assistance, military or veteran status, or any other legally-protected status.

Dorsey participates in E-Verify.

For Denver applicants only (as required by the Colorado Equal Pay Act): The starting salary for associate positions in our Denver office is $150,000. Pay is determined based on a variety of factors including, but not limited to, depth of experience in the practice area. Associates are eligible to participate in Dorsey’s associate bonus program, subject to the program’s conditions and restrictions.

About Dorsey:
Clients have relied on the international law firm of Dorsey & Whitney LLP since 1912 as a trusted legal advisor and valued business partner. With locations across the United States as well as Canada, Europe and Asia, Dorsey provides an integrated, dedicated approach to its clients' legal and business needs. Dorsey’s diverse client base includes more than one-third of Fortune 100 companies.
Our lawyers apply superb legal knowledge and skills with practical wisdom and a deep understanding of business and industry. We serve clients in nearly all industries, but focus on six key industries in which we have excellent depth and a history of achieving client success:

Banking and Financial Institutions
Development and Infrastructure
Energy & Natural Resources
Food, Beverage & Agribusiness
Healthcare
Technology

Dorsey’s distinguished alumni include U.S. Supreme Court Justice Harry Blackmun, noted law professor and scholar William Prosser and former U.S. Vice President Walter Mondale. Recognized for our dedication to community, Dorsey has met the ABA Law Firm Pro Bono Challenge every year since the Challenge began in 1993 by devoting more than 3% of billable hours to pro bono work.

One of our greatest strengths is a friendly, cooperative culture that values and appreciates each individual. Dorsey has received external recognition for our welcoming workplace, including:

Mansfield Certification Plus (Diversity Lab)
Best Law Firms for Women (National Association of Female Executives and Flex-Time Lawyers)
100% rating on the Corporate Equality Index (Human Rights Campaign)
Gold Standard Certification (Women in Law Empowerment Forum)
Adoption Advocate (Dave Thomas Foundation for Adoption)

How to Apply:
Dorsey accepts online applications at http://www.dorsey.com/attorneyjobs. We do not accept application materials by mail or email except as a reasonable accommodation for qualified disabled applicants. Individuals who are unable to use our online process due to a disability should call 612-492-5149.

Additional Info
Employer Type: Law Firm
Job Location: Denver, CO, Salt Lake City, UT, or Seattle, WA

Patent Litigation – Law Firm – Dallas, TX

March 2, 2021- US - Southwest, Work - Patent Litigation

Carter Arnett PLLC
Our trial boutique law firm is looking to grow its patent litigation group. We’re looking for an experienced patent litigation attorney with a strong technical background and an entrepreneurial spirit. Depending on industry and other background, the ideal experience level is from three years to ten years of active litigation, including Inter Partes Review proceedings. Experience in evaluating patent portfolios and trying cases to juries is a plus.

Litigation/IPR Associate – Large Law Firm – Portland, OR

February 26, 2021- US - Northwest, Emp - Law Firm, Work - Patent Litigation

Klarquist Sparkman, LLP, a mid-size law firm focusing exclusively on Intellectual Property law, is actively seeking lateral litigation / IPR associates for its office located in Portland, Oregon. Candidates should have excellent academic credentials (top 33% of class preferred, top 10% strongly preferred) and preferably at least 2–5 years of experience litigating district court patent suits and/or inter partes reviews before the PTAB. Excellent writing, interpersonal, and communication skills are required. A technical background, active patent bar, and judicial clerkship experience (particularly at the Federal Circuit Court of Appeals) are highly preferred.

Director, Patent Litigation – Large Corporation – Los Gatos, CA or Los Angeles, CA

January 7, 2021- US - West, Emp - Corporate (in-house), Work - Patent Litigation

Netflix is transforming entertainment, changing what television is and how it can be enjoyed. Fueled by the broad appeal of being able to instantly watch unlimited movies and TV shows, Netflix is the world's leading Internet television network with over 196 million members in 190 countries currently enjoying more than two billion hours per month of original series, documentaries, and feature films.

This growth makes Netflix a target for patent assertion by patent trolls and operating companies in the US and abroad. The Legal team seeks an experienced patent litigator to join its patent and litigation teams and defend against those assertions. The position may be based either in Los Gatos or Los Angeles, California. The position will report to the Director of Litigation & IP, will partner with our patent team, and will collaborate with our product, commercial legal, and public policy groups in carrying out their responsibilities.

In this role, the successful candidate will oversee Netflix’s patent litigation matters. They will partner with outside counsel to set strategy, review filings, facilitate discovery, and oversee every other phase of litigation from complaint to judgment. They will also be responsible for analyzing licensing “opportunities,” contributing to Netflix’s patent policy advocacy, advising on patent risk for the patent and product legal teams, and partnering with the product team to manage patent risk.

The successful candidate will thrive in an environment where freedom and responsibility are tenets, innovation and curiosity are mandates, and long-term vision and thoughtful judgment are prioritized over corporate processes. Strong risk tolerance and an experienced perspective on litigation are also critical in this role.

Qualifications:

A JD and be a member of a state bar with 10 years experience in patent litigation, with additional experience in patent prosecution or licensing a plus.
A background in computer science or computer engineering, with experience with audio/video encoding and internet technologies preferred.
In-house experience preferred, but not required.

The successful candidate will also have:

Excellent judgment and concise and candid communication.
An ability to work proactively and independently.
Strong and interesting views on patentable innovations, litigation shenanigans, and emerging technologies.
A sense of humor, which is patent trolls’ secret weakness.

Apply online at:
https://jobs.netflix.com/jobs/52206357

Additional Info
Employer Type: Large Corporation
Job Location: Los Gatos, CA or Los Angeles, CA

Patent Attorney or Agent – Law Firm – Leawood, KS (Kansas City area) / Remote Possible

January 7, 2021- US - Midwest, - US - Telecommute, Emp - Law Firm, Tech - Electrical, Tech - Mechanical, Work - Patent Litigation, Work - Patent Prosecution

Erickson Kernell IP, LLC is seeking an experienced patent attorney or patent agent to join their team based in Kansas City to assist with all aspects of patent preparation and prosecution, client counseling and litigation support. We offer a competitive, production based compensation package with benefits including a retirement plan and health insurance. Preferred candidates are admitted to practice before the USPTO and have three or more years of experience preparing and prosecuting patent applications, an engineering degree, excellent writing skills and a portable book of business in excess of $100,000/year. We offer a flexible and collegial working environment with opportunities for professional growth and client development. Remote working opportunities are available.

Technical Advisor – Law Firm – Texas and DC Area

October 22, 2020- US - MidAtlantic and South, - US - Northwest, - US - Southwest, Work - Patent Litigation

McGuireWoods LLP has an opening for a Technical Advisor to provide litigation support to patent teams on telecom-related matters in one of the following locations: Richmond, Washington D.C., Tyson’s Corner, Dallas or Houston. The candidate should have a post-graduate degree in Electrical Engineering with technical expertise in the telecommunications industry and specific experience with the 4G/5G telecommunications standards. Experience with patents or qualification as a patent agent is a plus.

Intellectual Property Manager – Company – Victor, NY

October 15, 2020- US - Northeast, Tech - Biotech, Tech - Mechanical, Work - Licensing / Other Corporate, Work - Patent Litigation

LSI Solutions, located in beautiful Victor, New York, is a dynamic and growing medical device company with nearly 400 employees dedicated to advancing minimally invasive therapeutics through research, development, manufacturing, and marketing of minimally invasive surgical instruments.Intellectual Property Manager

JOB SUMMARY: Supports Executive Team, Discovery, Technology, and Engineering as needed. Manages the Intellectual Property Team and executes primary and strategic intellectual property (IP) activities. Activities will be of a scheduled and unscheduled nature.

ESSENTIAL FUNCTIONS:

Enhance, maintain, and advise on Company intellectual property portfolio, including patents (utility and design), trademarks, and trade secrets.
Develop and apply a process to ensure that all patent, trademark, and trade secret aspects of intellectual property are being addressed in a strategic manner that is consistent with and based on the Company’s business plans and goals as communicated by the Company’s President, Vice Presidents and Directors;
Develop and maintain a coordinated IP and product roadmap from concepts through released products, while executing IP milestones in sync with appropriate events in a planned and controlled fashion.
Efficiently and effectively manage, develop, and train all employees assigned to the IP group, including, but not limited to patent drafts people, paralegals, patent administrators, and other administrative staff.
Actively research and identify intellectual property potential for new Company technologies.
Perform due diligence and patent validity and infringement analyses on existing Company patents, and patents filed or acquired by the Company.
Recommend appropriate path in regard to patentability, claims, prosecution, and amendments.
Efficiently research and analyze prior art.
Develop an IP landscape for the technology areas important to the Company. Identify and contribute towards possible areas for innovation opportunity.
Write abstracts, brief and detailed descriptions, summaries, and develop claims in accordance with best patent practices which are consistent with current patent case law and rules.
Advise pertinent staff regarding associated rules and regulations to adhere to in filing proceedings.
Prepare and file U.S. patent applications with the U.S. Patent and Trademark Office (USPTO).
Prepare and file international Patent Cooperation Treaty (PCT) patent applications with the U.S. Receiving Office.
Coordinate foreign patent filings and prosecution with foreign agents as required.
Screen and select foreign IP agents for working with the Company.
Communicate with the USPTO and relevant examiners and boards.
Analyze USPTO and PCT office actions and prepare & file appropriate
Handle all Company patent application appeals in front of the USPTO Patent Trial and Appeal Board.
Advise on and coordinate all Company Post Grant Opposition Proceedings.
Debate with USPTO examiners to withdraw rejections of applications for patent claims.
Recommend and develop software and tools required to achieve goals.
Perform “right-to-use” patent clearance searches as needed.
Develop efficient processes and systems to facilitate intellectual property filing
Set up and coordinate the maintenance of an intellectual property database, including status of active patents or pending applications, office actions, maintenance milestones, and impending fees.
Develop, maintain, and effectively share statistics on filed patent and trademark applications as well as issued patents and trademarks.
Coordinate workflow with internal and external service providers.
Organize and prioritize numerous tasks and complete them under time constraints in an efficient and cost-effective manner.
Interact professionally with clients, lawyers, and employees at all levels and provide information with ordinary courtesy and tact while safeguarding confidentiality.
Recommend best practices and implement procedures to ensure confidentiality.
Recommend best practices and implement procedures to maintain consistency and an active protective posture in regard to Company patents and trademarks.
Directly influence IP policy, including non-disclosure and confidentiality requirements, documents, and procedures.
Regularly update knowledge of pertinent USPTO, PCT, and international rules and case law to keep skills up to date.

EDUCATION & EXPERIENCE:

Bachelor’s degree in an engineering or scientific discipline.
Registered patent practitioner with the USPTO, having a minimum of 10 years of patent prosecution experience.
Successfully practiced patent law at either a law firm or in-house at a technology company.
Experienced at successfully interfacing with business executives and incorporating business aspects into IP filings and plans.
Experienced and successful team manager.
Experienced at successfully advising business executives.
Practical engineering experience is a plus.
Concentration in mechanical or biomedical engineering preferred.
Coursework and/or understanding of human anatomy is a plus.

KNOWLEDGE, SKILLS & ABILITIES:

Thorough knowledge of USPTO and PCT rules, guidelines, and processes.
Thorough knowledge of International and Regional filing timelines and rules necessary to work effectively with foreign counsel.
Demonstrated ability to successfully plan and manage activities for an IP team, including docketing, administrative, and technical/CAD related functions.
Proficient project manager.
Team oriented facilitator/mentor/worker.
Demonstrated technical proficiency.
Ability to quickly identify and understand novel mechanisms and/or processes.
Excellent communication skills (verbal and written).
Excellent persuasion and debate skills.
Excellent multi-tasking ability.
Customer-focused, goal-oriented self-starter.
Advanced knowledge of computers and software (e.g. MS-Word, MS-Excel, MS-Access).
Expert at deciphering mechanical drawings.
Proficiency with AutoCAD 2-D drafting software is a plus.

Apply online at:
https://www.lsisolutions.com/Careers

Attach Cover Letter (Optional)

Additional Info
Employer Type: Other
Job Location: Victor, NY

Patent Counsel – Large Corporation – Indianapolis, IN

October 14, 2020- US - Midwest, Emp - Corporate (in-house), Tech - Biotech, Work - Patent Litigation

Eli Lilly and Company is seeking a patent council in Indianapolis, IN. At Lilly, we unite caring with discovery to make life better for people around the world. We are a global healthcare leader headquartered in Indianapolis, Indiana. Our 39,000 employees around the world work to discover and bring life-changing medicines to those who need them, improve the understanding and management of disease, and give back to our communities through philanthropy and volunteerism. We give our best effort to our work, and we put people first. We’re looking for people who are determined to make life better for people around the world. #WeAreLilly

At Lilly, we serve an extraordinary purpose. We make a difference for people around the globe by discovering, designing and delivering medicines that help them live longer, healthier, more active lives. Not only do we deliver breakthrough medications, but you also can count on us to develop creative solutions to support communities through philanthropy and volunteerism.
Read on to find out more about how you can join our team where you will enjoy relevant work, build a successful career and make meaningful contributions to our patient's lives.

Responsibilities:

The objective of this position is to provide prudent, ethical, landscape-aware, and law-informed solutions for issues facing Eli Lilly and Company in its discovery, development, and commercialization of small molecule pharmaceutical products.
Draft and prosecute pharmaceutical patent applications in all jurisdictions in accordance with business requirements, patent laws and Lilly policies and procedures.
Monitor, manage and assist in litigation and oppositions in all jurisdictions related to Lilly and third party patent portfolios.
Analyze risks with appropriate consideration of business objectives and the environment, and develop sound tactical approaches to providing solutions that are prudent, ethical, landscape-aware, and law-informed as described above.
Advise teams and management about exclusivity, freedom to operate, due diligence, contract, licensing, and litigation risks in a manner consistent with the law, ethics, and Lilly policies; communicate advice in a manner understandable to a lay person.
Remain well versed in US and global laws, court precedents, and regulations pertinent to pharmaceutical products; apply knowledge appropriately in carrying out responsibilities.
Prioritize and manage projects; contribute to the implementation of new policies and procedures; lead task-directed teams.
Contribute to efficiency, collegiality, and collaboration.
As needed, lead or participate in due diligence, licensing and inter partes matters

Basic Qualifications:

Bachelor’s degree or higher in a scientific field that together with prior work experience, provides sufficient background for effective communication with scientists and management about scientific aspects of discovery, development, and commercialization of small molecule products.
Doctor of Jurisprudence (J.D.) degree from an accredited U.S. institution.
4 or more years of post-JD experience as a patent attorney in a law firm or industry.
Presently admitted to practice law in at least one US jurisdiction and presently licensed to represent clients in patent matters before the USPTO; in good standing in each state and in the USPTO; no discipline issues on record.
Additional Information
Office work located at Lilly Corporate Center primarily supporting groups located at Lilly Corporate Center and Lilly Technology Center (Indianapolis), Lilly Biotechnology Center (San Diego), Loxo Oncology at Lilly (Stamford, CT; San Francisco; and Boulder), and Lilly New Jersey/New York. Travel is usually not significant (0-10%), but travel could become more significant (10-20%) intermittently for internal/external requirements.
Lilly is an EEO/Affirmative Action Employer and does not discriminate on the basis of age, race, color, religion, gender, sexual orientation, gender identity, gender expression, national origin, protected veteran status, disability or any other legally protected status.

Additional Skills/Preferences:

At least 3 years of experience in the pharmaceutical industry in a scientific position in drug discovery or development, or demonstrated significant experience with and knowledge of drug discovery and development, and/or with patent litigation relating to drugs.
At least 3 years of experience preparing and prosecuting patent applications relating to small molecule and, optionally, biological (antibody and/or peptide) pharmaceutical products.
Strong Law School performance as evidenced by grades, accomplishments, and/or awards.
High learning agility, including: creatively solving problems; having ability to deal with complexity; having high curiosity; responding well to constructive feedback; seeking improvement of self and Lilly; accepting or leading change and helping others adapt to change; having the ability to adjust style to audience; and having the ability to make the complex understandable.
Sensitivity to others; composure under stress; ability to quickly learn and adapt.
Ability to organize self, to multi-task effectively, to complete projects with deadlines on time, and to direct others.
Effective as individual contributor, team member, and leader.

Apply online at:
https://lilly.wd5.myworkdayjobs.com/LLY/job/US-Indianapolis-IN/Patent-Counsel_R-4271-1

Additional Info
Employer Type: Large Corporation
Job Location: Indianapolis, IN

Intellectual Property & Technology Litigation Associate – Large Law Firm – Minneapolis, MN

October 8, 2020- US - Midwest, Tech - Computer Science, Tech - Electrical, Work - Patent Litigation

Robins Kaplan’s Minneapolis office seeks an associate to join our growing Intellectual Property & Technology Litigation practice. Qualified candidates will have strong academic credentials and two to five years of complex litigation experience in intellectual property and technology cases. A bachelor’s degree in electrical or computer engineering, computer science, or the sciences is preferred. Strong research and writing skills are required, along with a demonstrated desire to be a trial lawyer.