Intellectual Property Manager – Small Corporation – Victor, N.Y.

June 24, 2019- US - Northeast, Emp - Corporate (in-house), Tech - Any / Other, Tech - Biotech, Work - Patent Prosecution, Work - Regulatory

LSI SOLUTIONS^® located in beautiful Victor, New York, is a dynamic and growing medical device company dedicated to advancing minimally invasive therapeutics through research, development, manufacturing, and marketing of minimally invasive surgical instruments. We are seeking an Intellectual Property Manager. This role supports Executive Team, Discovery, Surgical Science, and Engineering as needed. Manages the Intellectual Property Team and executes primary and strategic intellectual property (IP) activities. Activities are of a scheduled and unscheduled nature. Travel may be required.

Essential Functions:

Enhance, maintain, and advise on Company intellectual property portfolio, including patents (utility and design) and trade secrets;
Develop and apply a process to ensure that all patent, 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 and CEO, 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 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 regarding 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 responses and amendments to procure high quality and strategic patents;
Handle all Company patent application appeals in front of the USPTO Patent Trial and Appeal Board;

Job Description:

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;
Prepare defensive IP publications as necessary;
Perform “right-to-use” patent clearance searches as needed;
Develop efficient processes and systems to facilitate intellectual property filing and docket management;
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 applications as well as issued patents;
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;
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;
Attend executive and planning meetings as recommended by the President and Directors in order to gain exposure to aspects of the business which will drive IP planning and actions; and
Perform other related duties and projects as business needs require at direction of management.

Education and Experience:

Registered patent practitioner (patent agent preferred) with the USPTO, having a minimum of ten years of patent prosecution experience;
Experienced at successfully interfacing with business executives and incorporating business aspects into IP filings and plans;
Experienced at successfully advising business executives;
Experienced at successfully leading and mentoring a diverse team;
Practical engineering experience is a plus.
Bachelor’s degree in an engineering discipline;
Concentration in mechanical or biomedical engineering preferred; and
Coursework and/or understanding of human anatomy is a plus.

Knowledge, Skills, and 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; and
Proficiency with AutoCAD 2-D drafting software and/or AutoCAD Inventor is a plus.

Physical Demands and Work Environment:
The physical demands described here are representative of those that must be met by an employee to successfully perform the essential functions of this job. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.

Sitting, standing, and/or walking for up to eight hours per day.
Frequently required to lift and/or carry from 1-5 lbs., occasionally 25-30 lbs.
Frequently required to push and/or pull from 1-2 lbs., occasionally 10-20 lbs.
Routine use of standard office equipment such as computers, phones, photocopiers, filing cabinets, and fax machines.
Occasionally required to stoop, kneel, crouch, and crawl.
Regularly required to talk and/or hear, see, see color, handle/reach, and perform repetitive motion.
Able to occasionally travel commercially.
By providing my electronic signature I can, with or without reasonable accommodation(s), perform the essential functions of this position.

Contact
To apply, please visit this link: https://www.lsisolutions.com/careers/.

Additional Info
Employer Type: Small Corporation
Job Location: Victor, New York

Trademark Prosecution Associate Attorney – Large Law Firm – Salt Lake City, Utah (Updated)

June 23, 2019- US - West, Emp - Law Firm, Work - Patent Prosecution, Work - Trademark

Thorpe North & Western is seeking a trademark attorney with 2 to 7 years of trademark preparation and prosecution experience. An intellectual property background and excellent writing skills are required. It is expected that Applicants possess substantial experience prosecuting trademark applications. Applicants admitted to practice before the USPTO will be given preference.

Patent Agent – Large Law Firm – Alexandria, Va.

June 19, 2019- US - MidAtlantic and South, Emp - Law Firm, Tech - Computer Science, Tech - Electrical, Work - Patent Agent, Work - Patent Prosecution

Buchanan Ingersoll & Rooney PC has an immediate opening in our Alexandria office for a patent agent with a degree in electrical engineering or computer science. This position requires the ability to think critically, to quickly understand new technologies and to write well. Candidates would preferably have some patent drafting and prosecution experience, but experience is not required. Responsibilities will include, but are not limited to, drafting patent applications and prosecution of patent applications before the U.S. Patent and Trademark Office and patent offices around the world. Candidates must be already registered to practice before the USPTO or be willing to sit for the registration exam. All applications must be accompanied by a cover letter, resume, and college transcript(s).

Associate – Small Law Firm – Austin, Texas or Telecommute

June 19, 2019- US - MidAtlantic and South, Emp - Law Firm, Tech - Computer Science, Tech - Electrical, Tech - Mechanical, Work - Patent Prosecution

Kennedy Lenart Spraggins LLP has an opening for a registered U.S. patent attorney to join our growing patent practice as a full-time associate. Remote associates are welcome. Primary responsibilities will include preparing and prosecuting patent applications. Requirements for an ideal candidate include a B.S. or higher degree in computer science, computer engineering, or electrical engineering and at least two years of patent preparation and prosecution experience.

Patent Prosecution Associate – Large Law Firm – Salt Lake City, Utah

June 6, 2019- US - West, Emp - Law Firm, Tech - Electrical, Work - Patent Prosecution

The Salt Lake City office of Stoel Rives LLP seeks a patent prosecution associate with at least 2 years of relevant experience to join its Technology and Intellectual Property (TIP) group. The ideal candidate will have 2 to 4 years of experience with a strong technical background in electrical engineering. Strong academic credentials, client service skills, and writing skills and USPTO registration are required. Membership to the Utah bar is strongly preferred.

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

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

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

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

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

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

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

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

Patent Prosecution Associate – Large Law Firm – Palo Alto, Calif.

May 31, 2019- US - Silicon Valley & SF, - US - West, Emp - Law Firm, Tech - Computer Science, Tech - Electrical, Work - Patent Litigation, Work - Patent Prosecution

Duane Morris LLP has an opening for an associate (or patent agent) with 3-5 years' experience in patent prosecution to join its growing Intellectual Property practice group in its Silicon Valley office. Ideal candidate must have a EE/Computer Science technical background along with strong academic credentials, superior writing ability, a quick-study aptitude, ability to engender client confidence, and thrive in a creative, entrepreneurial and collegial environment. USPTO and California Bar admission required. EOE/AA/M/F/D/V.

Patent Attorney / Patent Agent – Small Law Firm – Tysons Corner, Va. or Telecommute

May 31, 2019- US - MidAtlantic and South, Emp - Law Firm, Work - Patent Agent, Work - Patent Prosecution

Jones Robb, PLLC is seeking remote or local registered patent attorneys or agents to prepare and prosecute patent applications alongside a team of talented attorneys, dedicated partners, and a top-notch staff, in a congenial and collaborative environment. We offer the opportunity to learn and master different technologies and to develop client relationship skills to help take our practice to new heights. At Jones Robb you will get the chance to solve challenging problems and achieve client-specific goals, working with a technical expertise that spans a variety of engineering and computer science disciplines, in industry sectors such as automotive, data analytics/processing, biomedical devices, displays, energy, robotics, and telecommunication.

Patent Agent – Law Firm – Philadelphia, Pa.

May 31, 2019- US - Northeast, Emp - Law Firm, Work - Patent Agent, Work - Patent Prosecution

Morgan Lewis & Bockius LLP, one of the world’s leading global law firms with almost 4,000 lawyers and staff in 31 offices is seeking a Patent Agent.

The Patent Agent is supervised by an intellectual property partner, but will have daily contact with, and will receive guidance from, all of the partners in the practice group for whom this individual provides support.

This position will reside in the Philadelphia, PA office and will be responsible for preparing, filing, and prosecuting patent applications before the U.S. Patent and Trademark Office (“USPTO”).

This position will contribute to important strategic patent procurement and enforcement decisions, and the Patent Agent will understand the business context of their efforts.

The Patent Agent will work closely with intellectual property practice group partners and attorneys to protect inventions in a manner that is consistent with his/her technical merit, while assuming significant client responsibilities and providing high quality legal services to domestic and foreign clients.

Responsibilities:

Perform patent searching
Investigate inventorship issues
Manage the intake of invention disclosures and review disclosures for patentability, novelty, and non-obviousness
Evaluate qualification and applicability of prior art
Study and analyze scientific or technical documents, including previously published patent documents, to assess patentability, novelty and inventiveness
Draft new patent applications; act as a second reviewer for filings; manage the processing of e-File filings
Convert prior provisional applications into utility applications; foreign filed applications into U.S. applications and U.S. applications into foreign applications
Prepare replies to U.S. and foreign office actions
Assist attorneys with prosecution; identify alternative prosecution scenarios and claim strategies to develop patent portfolios
Conduct interviews with USPTO examiners; prepare appeals to PTAB and clearance analyses
Prepare reexamination petitions, reissue applications, and IPR and CBM petitions
Engage in practice development activities to build and maintain client relationships
Prepare substantive client correspondence
Meet with clients to discuss inventions and ascertain whether the inventions are likely to lead to commercially meaningful patent claims
Provide patent prosecution training
Perform other duties as assigned

Education and Experience:

A bachelor’s degree in in engineering, including electrical engineering, mechanical engineering, biomedical engineering, chemical engineering, industrial engineering, computer engineering, and civil engineering, or computer science, or physics, math or related disciplines.
A bachelor’s degree (and preferably an advanced degree)
At least two (2) years of experience as a practicing patent agent
Registered to practice before the U.S. Patent and Trademark Office
Excellent writing and research abilities are a must, as well as proficiency in written and verbal communication, and strong organizational skills

Morgan, Lewis & Bockius LLP is committed to equal employment opportunity and providing reasonable accommodations to applicants with physical and/or mental disabilities. We value and encourage diversity and solicit applications from all qualified applicants without regard to race, color, gender, sex, age, religion, creed, national origin, ancestry, citizenship, marital status, sexual orientation, physical or mental disability, medical condition, veteran status, gender identity, genetic information, or any other characteristic protected by federal, state, or local law.

Pursuant to applicable state and municipal Fair Chance Laws and Ordinances, we will consider for employment qualified applicants with arrest and conviction records.

Morgan Lewis & Bockius LLP is also an equal opportunity employer and all qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability status, protected veteran status, or any other characteristic protected by law.

Contact
To apply, please submit a cover letter and resume via this link: https://morganlewis.wd5.myworkdayjobs.com/morganlewis/job/Philadelphia-Pennsylvania/Patent-Agent_R446-1.

Additional Info
Employer Type: Law Firm
Job Location: Philadelphia, Pennsylvania

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

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

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

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

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

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

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

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

Patent Prosecution Attorney – Law Firm – Chicago, Ill.

May 31, 2019- US - Midwest, Emp - Law Firm, Tech - Chemical / Pharma, Work - Patent Prosecution

Amin Talati Wasserman, LLP, a leading intellectual property boutique in Food, Drug, Dietary Supplement & Cosmetic Products with offices in Chicago and Washington, D.C., has an immediate need for a Patent Attorney with a specialty in Organic Chemistry or related discipline. The candidate should have 2-5 years relevant industry experience, and a Ph.D./M.S. in Organic Chemistry or related discipline is required. Candidates should have patent drafting and prosecution experience, and be capable of working on matters in most areas of chemistry, including medicinal chemistry, process chemistry, formulation chemistry, polymer chemistry, and biochemistry. Successful candidates will have outstanding writing and interpersonal skills, as well as strong academic credentials. J.D. from an accredited law school with admission to at least one state bar, and registration with the USPTO are required.

Patent Associate or Agent – Large Law Firm – Raleigh, N.C.

May 25, 2019- US - MidAtlantic and South, Emp - Law Firm, Tech - Biotech, Tech - Chemical / Pharma, Tech - Mechanical, Work - Patent Agent, Work - Patent Prosecution

Myers Bigel, P.A. is seeking a Biotechnology / Chemical Associate or Patent Agent. Candidates must be admitted or eligible for admission to the patent bar. Candidates having 1-3 years of experience and an advanced degree or experience in biochemistry, microbiology, agriculture-related technologies, virology, genetics, immunology, chemistry, pharmacology, or biomedical technology are preferred.

Patent Scientist (Biotechnology) – Large Law Firm – San Diego, Calif.

May 25, 2019- US - West, Emp - Law Firm, Tech - Biotech, Work - Patent Prosecution

Knobbe Martens provides an opportunity for engineers and scientists to further their professional growth and career development in exciting, challenging ways. Put your technical degree to work on issues involving science, technology, and the law. The candidate will assist with the successful procurement of patent protection for innovative technologies, evaluate the designs of new products, and assist with the evaluation of competitor products.

Part-Time Patent Associate or Agent – Large Law Firm – Atlanta, Ga. or Philadelphia, Pa.

May 19, 2019- US - MidAtlantic and South, - US - Northeast, Emp - Law Firm, Tech - Any / Other, Tech - Biotech, Work - Patent Agent, Work - Patent Prosecution

Ballard Spahr LLP is seeking a part-time associate or patent agent (.5 to .75 FTE) with at least two to five years of experience in domestic and foreign patent matters. The candidate will work on patent clearance, application preparation and prosecution, licensing, technology agreements, portfolio assessment, and due diligence, primarily in the biotech and life sciences fields, with some work on chemical and mechanical matters . We require top academic credentials and superb written, oral communication, and teamwork skills. An advanced degree in biotechnology, biochemistry, or life sciences, along with membership in the Patent Bar is preferred.
Ballard Spahr LLP is committed to ensuring diversity in its workplace, and candidates from diverse backgrounds are strongly encouraged to apply.

Patent Attorney / Agent – Large Law Firm – Tysons Corner, Va. or Telecommute

May 19, 2019- US - MidAtlantic and South, - US - Telecommute, Emp - Law Firm, Tech - Computer Science, Tech - Electrical, Work - Patent Prosecution

MH2 Technology Law Group, LLP is looking for local or remote, full-time or part-time patent professional to prepare and prosecute patent applications, draft opinions, and provide IP counseling for our clients, which include many Fortune 500 companies.

In particular, MH2 currently seeks patent attorney or agent with a background in software, computers, and/or electrical engineering. Candidates must have a technical degree in Computer Science, Computer Engineering, Electrical Engineering, Physics, or equivalent fields, and 2+ years of recent preparation and prosecution experience with software-related technologies. Candidates must require minimal training. Patent examiner experience or prior job experience as a software developer are a plus.

Experience with analog circuitry patents is a big plus. Candidates must have a technical degree in Computer Science, SW Engineering, Electrical Engineering, Physics, or a similar field, and 2-6 years of recent preparation and prosecution experience. Candidates must need minimal training. Patent examiner experience or prior job experience as an SW developer or electrical engineer are also a plus.

MH2 offers an innovative, transparent, production-derived salary, bonuses, and a comprehensive benefits package that includes 401(k) matching. Our attorneys and agents enjoy a work/life balance that they set for themselves, working as much or as little as they want. Some of our associates earn more than $200,000, while others are happy working and earning less. Our professionals are directly responsible for, and interact directly with, our clients and the USPTO, with the expert support of our highly experienced staff and the latest technologies. We encourage, support, and train our professionals in client development and pay bonuses for successful efforts. We help each other out all the time, as we practice in a collegial team environment.

Contact
Interested professionals should send a cover letter, a resume, and two writing samples (a software-related patent application and a software-related office action response) to info@mh2law.com. We are an equal opportunity employer and we support workplace diversity. For more information, visit our website.

Additional Info
Employer Type: Law Firm
Job Location: Tysons Corner, Virginia or telecommute

Patent Attorney or Agent – Small Law Firm – Telecommute

May 19, 2019- US - Telecommute, Emp - Law Firm, Tech - Electrical, Tech - Mechanical, Work - Patent Prosecution

DiBerardino McGovern IP Group (DMIP Group) is seeking a Patent Attorney or Patent Agent with 1-5 years of experience to join our team. The position will involve all aspects of patent prosecution including patent application drafting, and patent counseling, such as freedom-to-operate, invalidity, and non-infringement analyses. We offer a competitive salary, flexible working hours, a 401k plan, a friendly work environment, and a reasonable billable hours goal of 1,600 hours per year. DMIP Group is a virtual law firm, and we offer the opportunity to work remotely from any location in the United States.

IP Attorney or Agent (E.E./Software) – Large Law Firm – Atlanta, Ga. or Philadelphia, Pa.

May 19, 2019- US - MidAtlantic and South, - US - Northeast, Emp - Law Firm, Tech - Computer Science, Tech - Electrical, Work - Patent Agent, Work - Patent Prosecution

Ballard Spahr LLP is seeking a patent agent or lawyer with three to five years of patent prosecution experience in the electrical or software technologies areas to join our Atlanta or Philadelphia office. He or she will have the opportunity to join Ballard's national practice and work on both patent prosecution as well as patent litigation matters. Excellent academic credentials, a technical background in electrical engineering or computer engineering/science, and superb writing, oral communication, and interpersonal skills are required. Membership in both the Georgia and Patent Bars are preferred.

Intellectual Property Counsel – Large Corporation – Worcester, Mass.

May 15, 2019- US - Northeast, Emp - Corporate (in-house), Intellectual Property, Work - Patent Litigation, Work - Patent Prosecution

The Legal department of Saint Gobain North America (SGNA) is looking for an Intellectual Property Counsel to join their team. The IP Counsel will be responsible for general counseling on IP matters including patent prosecution enforcement and clearance, as well as trademark and trade secret matters, while building and maintaining the patent portfolio for SGNA. This individual will interact with a wide variety of people from R&D engineers to senior business managers.

Patent Counsel – Large Corporation – San Francisco, Calif.

May 12, 2019- US - Silicon Valley & SF, - US - West, Emp - Corporate (in-house), Tech - Computer Science, Work - Patent Litigation, Work - Patent Prosecution

The Kudelski Group (the “Group”) is looking for a Patent Attorney to join the Group’s global Intellectual Property Business Unit (“IPBU”) in support the IPBU’s worldwide prosecution team. The Group’s patent portfolio reflects the Group’s long inventive history and supports an industry leading Intellectual Property Team. This position will interact directly with the Group’s product units and outside counsel to implement KIPI’s prosecution strategy on a world-wide basis. This experienced attorney will manage all facets of protecting the Group’s inventive activity to continue the Group’s tradition of innovation. A successful candidate will have experience working with inventors, drafting or supervising the drafting of patent applications, very strong communication skills, and strong organization skills. The candidate will rely on these skills to manage the process of capturing the Group’s inventive activity. This attorney needs to thrive in a complex, fast-paced, and dynamic business environment, and also enjoy collaboration and teamwork within the IPBU and with business partners.

Reports to: Vice President, Chief IP Counsel

Primary responsibilities:

Work with Group employees to develop and protect inventions.
Drive innovation and “blue sky” sessions in support of directed invention harvesting.
Select and work with outside counsel to manage the preparation of high value, globally enforceable patents consistent with IPBU asset development guidelines and budgets.
Review all office actions, foreign filing decisions, appeals, continuations, new filings, and optionally draft applications to ensure compliance with varying global patent prosecution and enforcement systems.
Support freedom to operate analyses, license business case development, and/or patent litigation actions as needed.
Assist in analysis of patents being considered for use in licensing, acquisition, or divestiture.
Counsel inventors and IPBU on decisions around securing patent protection.
Coordinate with IPBU to develop and implement IP strategies to fit the Group’s varied needs.
Oversee implementation and expansion of the Group’s inventor recognition program.
Assist in patent clearance and freedom to operate for Group business units and products.
Provide regular project updates to VP and IPBU.
Ensure Group maintains a “Best in Class” asset management process with excellent results.

Qualifications:

Experience, Education & Certification:
- Juris Doctor (or equivalent) from a top law school with a membership in good standing with at least one State Bar and/or equivalent in a foreign jurisdiction and licensed to practice before USPTO and/or EPO.
- Engineering or science-based degree is desirable; must be familiar with Group’s technology, e.g., cybersecurity, video content delivery, and video security (e.g., DRM, Conditional Access Systems).
- At least 4 years of IP management or related experience required (preferably a mix of in-house and law firm experience)
- A working understanding of global filing and enforcement requirements.
- Litigation support is beneficial
- Proficiency with MS Office Suite (Word, Excel, PowerPoint) required.
Essential Traits:
- Excellent communication skills, the ability to work with various levels of management, strong analytical skills, detail oriented, and the ability to successfully lead cross-functional teams to achieve identified objectives required.
- Strong organizational skills, e.g., maintaining attention to detail on multiple projects simultaneously, and the ability to adjust to changing priorities and deadlines.
- Ability and desire to work collaboratively on a team.
- Sound legal and business judgment.
- Self-starter with strong problem-solving skills.
- Capacity to proactively isolate and prioritize issues and to focus on implementing both top-level, strategic solutions as well as the day-to-day initiatives.
- Ability to quickly assimilate and understand complex situations and information, including highly technical information.
- Able to quickly establish credibility, respect and trust.
- Strong sense of ownership, integrity and courage of conscience.
Language Skills:
- English language fluency is necessary, French is beneficial.

Contact
To apply, please email us at: ryan.lunsford@nagra.com.

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

Patent Associate / Agent – Small Law Firm – Southfield, Mich.

May 12, 2019- US - Midwest, Emp - Law Firm, Tech - Computer Science, Tech - Electrical, Tech - Mechanical, Work - Patent Litigation, Work - Patent Prosecution

Bejin Bieneman, PLC, is seeking a patent associate or registered patent agent with at least two years’ experience to immediately join the firm. You will prepare and prosecute patent applications in electronics, software, controls, electro-mechanical, and/or the mechanical arts, and may be asked to assist in intellectual property transactions, litigation, and opinion work.