Patent Attorney – Large Corporation – Bedford, Mass.

March 14, 2012- US - Northeast, Emp - Corporate (in-house), Tech - Electrical, Tech - Mechanical, Work - Licensing / Other Corporate, Work - Patent Prosecution

Hologic, Inc. (NASDAQ: HOLX) is a leading developer, manufacturer and supplier of premium diagnostics, medical imaging systems, and surgical products dedicated to serving the healthcare needs of women throughout the world. Historically, Hologic developed, manufactured, and marketed products focused on mammography, breast care, and osteoporosis assessment. Our core business units are focused on breast health, diagnostics, GYN surgical, and skeletal health. For more information visit www.hologic.com

Summary of Duties & Responsibilities:
• Collaborate with outside US and foreign patent counsel handling patent portfolio development and prosecution matters, including some in-house drafting of applications and prosecution matters
• Obtain and maintain a detailed understanding of products and technical developments of supported business unit, including the competitive landscape
• Counsel scientists and management regarding IP portfolio and strategy, including management of patent portfolios in collaborative relationships
• Assist in all areas of due diligence, including conducting patentability reviews and freedom-to-operate reviews for in-house projects as well as for in-house licensing opportunities and acquisition targets
• Review and assist in drafting, nondisclosure, research, license and other agreements involving the use, transfer, or ownership of IP
• Active monitoring of budget

Qualifications:
To perform this job successfully, an individual must be able to perform each essential duty satisfactorily. The requirements listed below are representative of the basic knowledge, skills, and/or abilities required. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.
• Admitted to practice law in one state, MA preferred
• Registered to practice before the USPTO
• Any viable candidate must have had experience:
o Drafting patent applications and claims in the electrical, physics and/or software art
o Directing U.S. and foreign counsel for patent portfolio support
o Performing freedom to operate and patentability searches
o Counseling clients regarding their IP strategy, managing patent review board meetings
o Providing IP support for contract negotiations, including experience drafting and negotiating IP provisions for consulting, licensing
• A preferred candidate has experience:
o Supporting acquisition activity of a business development group
o Supporting IP litigation

Education:
• Undergraduate degree in Electrical Engineering or Physics
• JD from nationally accredited law school

Experience:
• At least three to five years as a practicing patent attorney, in-house experience as an engineer and/or in an in-house legal office required

Contact:
Apply by emailing Erin Carroll at erin.carroll@hologic.com. Hologic, Inc. is proud to be an equal opportunity employer.

Agency and Third Party Recruiter Notice:
Agencies that submit a resume to Hologic must have a current executed Hologic Agency Agreement executed by a member of the Human Resource Department. In addition Agencies may only submit candidates to positions for which they have been invited to do so by a Hologic Recruiter. All resumes must be sent to the Hologic Recruiter under these terms or they will not be considered.

Additional Info:
Employer Type: Large Corporation
Job Location: Bedford, Massachusetts

Contracts/Biotechnology Patent Attorney – Large Corporation – San Diego, Calif.

March 12, 2012- US - Southwest, - US - West, Emp - Corporate (in-house), Tech - Biotech, Work - Licensing / Other Corporate, Work - Patent Prosecution

Genomics Institute of the Novartis Research Foundation (GNF) is looking for a biotechnology patent attorney who also has significant experience in handling corporate transactions. The successful candidate will work closely with GNF’s scientists, engineers, and business associates in providing intellectual property and transactional support to enable them to accomplish GNF's mission of discovering new medicines that address unmet medical needs.

The position will include two areas of responsibility:
1) Biotechnology Patents
• Draft and prosecute patent applications directed to biotechnology-related inventions, including antibodies and other biotherapeutics; manage associates in non-US countries.
• Analyze third party patents to identify freedom to operate issues and plan strategies for dealing with such issues, such as recognizing patent validity and noninfringement issues and working with researchers identify design-around strategies.

2) Contracts
• Negotiate, draft and review contracts of various size and scope with collaborators, customers, suppliers, and other third party partners. Typical agreements include research collaboration agreements, in- and out-licensing deals, materials transfer agreements, non-disclosure agreements.
• Provide legal advice and assist with resolving contract disputes.

Requirements:
• 5-8 years in-house or law firm experience as a patent attorney (prefer experience with research-focused biotech or pharmaceutical company).
• Advanced degree in molecular biology or related field (Ph.D. strongly preferred).
• JD from ABA-approved law school; good standing with a state Bar (preferably California).
• Demonstrated experience in drafting and prosecuting biotechnology patent applications in US and other countries around the world, and conducting freedom to operate and patent invalidity and non-infringement analyses.
• Experience in negotiating and drafting agreements that are typical for a research-focused pharmaceutical company.
• Ability to identify and analyze legal and intellectual property issues, define risks, and present clear recommendations.
• Strong interpersonal and communication skills with the ability to collaborate and function well in a team environment. Self-motivated and efficient, with good business judgment. A high degree of creativity and initiative is expected.

Contact:
Apply by emailing us at: jobs@gnf.org. Job Code: TS03-005.

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

Japanese IP Paralegal – Law Firm – Philadelphia, Pa.

March 12, 2012- US - Northeast, Emp - Law Firm, Work - Patent Prosecution

Volpe and Koenig, P.C., is is an energetic and forward thinking intellectual property law firm. The firm has a substantial foreign client base that includes a significant Japanese practice. We are seeking a Japanese speaking patent paralegal for our Center City office. We currently have one native Japanese employee in Japan and are seeking to improve our language abilities to better communicate with our clients in Japan.

Associate – Law Firm – Parsippany, N.J.

March 9, 2012- US - Northeast, Emp - Law Firm, Tech - Any / Other, Tech - Electrical, Tech - Mechanical, Work - Patent Agent, Work - Patent Prosecution

Hoffmann & Baron, LLP seeks a registered Patent Attorney/Agent with minimum 3-5 years of experience in patent application preparation and prosecution in the technology areas of computers and business methods. Experience in other technology areas also helpful, such as, mechanical and eletromechanical.

Associate – Law Firm – Austin, Texas

March 7, 2012- US - MidAtlantic and South, - US - Midwest, Emp - Law Firm, Tech - Electrical, Tech - Mechanical, Work - Patent Prosecution

Larson Newman LLP, an IP boutique in Austin, Texas, is looking for experienced, skilled and productive patent attorneys to join our team. We serve a diverse group of sophisticated clients for whom we do exceptional work in a team oriented environment. An electrical engineering degree and 3-5 years experience in preparing and prosecuting patent applications is required. Experience with graphics, wireless, or mixed signal technology preferred.

IP Associate (Chemical) – Law Firm – Denver, Colo.

March 7, 2012- US - Midwest, Emp - Law Firm, Tech - Chemical / Pharma, Work - Patent Prosecution

Patent Attorney – Lawrence Berkeley National Laboratory – Berkeley, Calif.

March 5, 2012- US - West, Emp - Government, Work - Patent Prosecution

The Technology Transfer and Intellectual Property Management Department is looking for an experienced Patent Attorney to help in its mission to protect and best position intellectual property in the physical sciences for commercialization. In this role you will work with cutting edge science and diverse technologies that can impact the world.

Key Responsibilities:
Working in a highly collaborative environment, you will:
• Prepare and file patent applications. Using the invention disclosure, other documents, and interviews with the inventors, draft patent applications as requested by Licensing associate responsible for the case. Conduct preliminary patent searches, review proposed publications for issues of patentability utilizing knowledge of U.S. and foreign intellectual property laws. Independently establish priorities to accomplish objectives and meet all bar dates. Coordinate and supervise work of external counsel on assigned cases that have been sent out; review associated legal bills for accuracy, reasonableness and compliance with Contract requirements.
• Prosecute patents. Review Office Actions/Examiner Reports from US Patent and Trademark Office and those of other jurisdictions. Assess and analyze complex patentability issues with potentially significant impact to the Laboratory. Independently prepare arguments or claim amendments responsive to the Office Actions/Examiner Reports. Coordinate and supervise such work of outside counsel on assigned cases.
• Perform legal review. Evaluate and analyze complex invention disclosures and interact with scientists/inventors to monitor for developments. Review licenses, options and other agreements as assigned. Evaluate university rights relative to new inventions. Conduct complex patent infringement analyses and evaluate contract provisions. Interacts with Lab Management, outside management, and attorneys on assigned negotiations.
• Provide collegial advice and review to fellow patent practitioners, and participate in process improvement activities.

Qualifications:
• Bachelor’s or advanced degree in applicable science or engineering field of study (preferably physics, material sciences or related field), as well as a law degree and admission to California state bar with at least 5 years experience as a Patent Agent or Patent Attorney; or an equivalent combination of education and experience.
• Demonstrated proficiency in knowledge of patent preparation, prosecution, and enforcement
• Proven technical proficiency in assigned scientific area.
• Registered to practice before the U.S. Patent and Trademark Office.
• Ability to manage and analyze a number of complex cases that hold a potentially significant impact to the organization.
• Ability to independently review, negotiate and approve legal bills.
• Demonstrated analytical abilities, with demonstrated ability to identify and resolve complex problems.
• Excellent oral and written communication skills, to effectively communicate with all levels of internal and external personnel.
• Strong interpersonal skills and proven ability to manage collaboratively and diplomatically with internal peers and colleagues, administrative support staff, scientists and engineers, senior management, as well as external attorneys with ability to obtain concurrence from key stakeholders.

Contact:
Apply directly online at http://bit.ly/lbl74251Patently-O and follow the on-line instructions to complete the application process.

Berkeley Lab is an Affirmative Action/Equal Employment Opportunity employer committed to the development of a safe and diverse workforce.

Additional Info:
Employer Type: Government
Job Location: Berkeley, California

Lawrence Berkeley National Laboratory addresses the world’s most urgent scientific challenges by advancing sustainable energy, protecting human health, creating new materials, and revealing the origin and fate of the universe. Founded in 1931, Berkeley Lab’s scientific expertise has been recognized with 13 Nobel prizes. The University of California manages Berkeley Lab for the U.S. Department of Energy’s Office of Science. Read about the excellent Total Rewards Program at Berkeley Lab. For more about the TTIPM department, visit www.lbl.gov/Tech-Transfer/

Associate/Patent Agent – Law Firm – Arlington, Va.

March 3, 2012- US - MidAtlantic and South, Emp - Law Firm, Tech - Any / Other, Work - Patent Agent, Work - Patent Prosecution

Nixon & Vanderhye P.C. seeks experienced registered Associate or Patent Agent, primarily for drafting and prosecuting computer and electronics-related patent applications. Candidates should have strong technical and writing skills and experience drafting and prosecuting U.S. patent applications.

IP Attorney – Large Corporation – New Haven, Conn.

February 29, 2012- US - Northeast, - US - West, Emp - Corporate (in-house), Tech - Any / Other, Tech - Electrical, Tech - Mechanical, Work - Licensing / Other Corporate, Work - Patent Litigation, Work - Patent Prosecution

Covidien is seeking an IP attorney to work in its New Haven, Connecticut offices (relocation benefit provided). The Intellectual Property Attorney spearheads patent protection for Covidien’s intellectual property and ensures that the Company has the right to manufacture and sell products develop brought to market.

A qualified candidate has deep experience in intellectual property, client counseling, strategic portfolio management and right-to-use studies.

Core Responsibilities:
• The IP Attorney advances the specific technical interests of Covidien’s Surgical Devices’ business unit (SD GBU);
• Works with research and development to secure disclosures of invention and closely follows development projects for preparation of patent applications in assigned areas of responsibility
• Prepares and prosecutes patent applications before the USPTO;
• Supervises outside counsel in the preparation and prosecution of patent and trademark applications globally;
• Ensures that SD GBU has the right to make, use and sell products developed and brought to market;
• Promotes, as appropriate, the interests of SD GBU’s on intellectual property matters and;
• Follows patents issued in fields of interest to SD GBU and brings relevant patents to the attention of appropriate SD GBU research personnel and Chief Patent and Trademark Counsel

Competencies/Skills Required:
• Strong interpersonal and analytical skills;
• Must be able to strategically plan and drive execution;
• Exhibit change- agent thinking;
• Ability to develop and communicate compelling business arguments in a cogent, persuasive manner;
• Comfort interacting with C-level executives;
• Demonstrated leadership and teamwork skills and;
• Proficient with Microsoft Word, PowerPoint and Excel

Qualifications:
• 4 - 6+ years’ patent prosecution, client counseling and licensing; litigation experience
preferred
• Proven track record of success in a large law firm with a specialization in medical devices and/or life sciences
• Admitted to State Bar and registered to practice before USPTO

Contact:
Apply by emailing Elizabeth Onishuk at elizabeth.onishuk@covidien.com.

Additional Info:
Employer Type: Large Corporation
Job Location: New Haven, Connecticut

The lifesaving work of medical professionals inspires us. Through partnerships with medical communities around the globe, we create advances in medical devices, supplies and pharmaceutical products to improve lives. From reducing surgery time to accelerating healing, our breakthrough solutions are a vital part of daily healthcare delivery.

Innovation drives our success. Through progressive thinking and cutting-edge technologies, Covidien is well positioned to lead the way in today’s rapidly changing healthcare industry.

Join us, knowing your career is backed by the resources only a $10+ billion healthcare leader can offer.

Patent Associate – Law Firm – Portland Ore., or Seattle, Wash.

February 27, 2012- US - Northwest, Emp - Law Firm, Tech - Electrical, Tech - Mechanical, Work - Patent Prosecution

Patent Counsel – Large Corporation – Cary, N.C.

February 27, 2012- US - MidAtlantic and South, Emp - Corporate (in-house), Tech - Electrical, Tech - Mechanical, Work - Licensing / Other Corporate, Work - Patent Litigation, Work - Patent Prosecution

SAS is seeking a Patent Counsel to support the company by providing legal advice and assistance throughout the company, including regional offices and subsidiaries on a worldwide basis. You will independently perform a full range of patent-related legal services and maintain a diverse caseload, but your primary focus will be on the preparation and prosecution of patent applications for inventions made by SAS employees. However, you will also be involved in patent licensing, patent litigation and other intellectual property matters that arise from time to time.

Primary Responsibilities for Role:
• Managing idea development and harvesting from global research and development.
• Processing new ideas to develop complete invention disclosures to help control application drafting costs.
• Efficiently identifying prior art.
• Providing consistent claim strategy and ensuring that patent applications are efficient and complete.
• Working with outside counsel and inventors to respond to office actions from the USPTO.
• Supporting managing attorney in litigation and other corporate counseling roles.
• Providing legal counsel and oversight for basic to complex legal matters affecting the company.

Essential Qualifications:
JD Degree from an accredited law school. Licensed to practice law by being admitted to and a member in good standing of at least one state bar. If not a member of the North Carolina Bar, be qualified for admission to the North Carolina Bar within the first year of employment. Member in good standing of the U.S. Patent Bar.

Additional Qualifications:
Works on legal issues of moderate scope where analysis of situations or data requires a review of a variety of factors. Regularly interacts with senior internal and external personnel. Researches and analyzes proposed transactions, assesses risks and rewards, and recommends strategies to minimize risk. Ability to perform the duties of the job with general instructions on routine work and detailed instructions on new projects or assignments. Exercises judgment within defined procedures and practices to determine appropriate action

Preferences:
Three years of patent preparation and prosecution (in the software field) experience at a law firm. Undergraduate degree in Computer Science or Electrical Engineering. Former examiner at USPTO. Prior in-house Corporate legal counsel experience managing preparation and prosecution. Experience with patent litigation.

Contact:
Apply online by visiting this link: http://sas.taleo.net/careersection/10000/jobdetail.ftl?lang=en&job=12001394.

Additional Info:
Emloyer Type: Large Corporation
Job Location: Cary, North Carolina

Chemical and Biomedical Engineering IP Attorney – Law Firm – Washington, DC

February 24, 2012- US - MidAtlantic and South, Emp - Law Firm, Tech - Biotech, Tech - Chemical / Pharma, Work - Patent Prosecution

Corporate Counsel – Large Corporation – Glen Burnie, Md.

February 24, 2012- US - MidAtlantic and South, Emp - Corporate (in-house), Tech - Chemical / Pharma, Work - Licensing / Other Corporate, Work - Patent Prosecution

Associate – Law Firm – Washington, DC

February 24, 2012- US - MidAtlantic and South, Emp - Law Firm, Tech - Chemical / Pharma, Work - Patent Prosecution

Westerman, Hattori, Daniels & Adrian, LLP, a collegial, growing 24-attorney/agent international IP boutique seeks a chemical IP attorney/agent with three or less years of IP experience for its Washington, DC office. Candidates must be registered to practice before the USPTO. Prior industry chemical engineering work experience a plus. Preference is given to candidates with a second language capability. WHDA is an equal opportunity employer.

International IP Manager – Law Firm – Washington DC

February 21, 2012- US - MidAtlantic and South, Emp - Law Firm, Tech - Biotech, Tech - Chemical / Pharma, Tech - Electrical, Tech - Mechanical, Work - Patent Litigation, Work - Patent Prosecution

Banner & Witcoff a national intellectual property law firm, is seeking an experienced manager to lead the International Department in either the Chicago or Washington, DC location. The ideal candidate must have a minimum of 10 years in a management or leadership role, and at least 5 years in the international area of intellectual property. The ideal candidate will be detail oriented, have strong computer skills and be able to multi task.

Patent Preparation & Prosecution Attorney – Law Firm – Remote

February 21, 2012Emp - Law Firm, Tech - Electrical, Tech - Mechanical, Work - Patent Prosecution

Axiom, a modern alternative to the traditional law firm and one of the nation's fastest growing private companies, is hiring attorneys to join our nationwide patent prep and pros practice.

Alums of the nation’s best law firms and corporate law departments, Axiom Attorneys work in a uniquely integrated way with our predominantly Fortune 100 client base. In Axiom they’ve found variety, interesting work, and the chance to be a legal pioneer.

The ideal candidate will have:

• Exceptional academic and law firm credentials; in-house experience with Fortune 500 company strongly preferred.
• Undergraduate or graduate degree in electrical engineering, mechanical engineering or computer sciences strongly preferred.
• 7+ years of patent preparation and prosecution experience, specifically substantial experience conducting proceedings before the USPTO, including several interferences under the old and new rules, reexamination proceedings, public use and protest proceedings, appeals and foreign oppositions.
• Experience evaluating of invention disclosure; searching prior art references; interviewing inventors; drafting applications; filing IDS; responding to office actions; conducting examiner interviews; appealing final decisions; conducting interferences; conducting protests and public use proceedings, and prosecuting reissue and reexamination applications.
• Must possess excellent interaction skills with executive management; senior business personnel; business teams; inventors; and general counsels.
• Must possess experience managing a large patent portfolio.
• Knowledge of computer science, electrical engineering or information retrieval, either through undergraduate degree or industry experience preferred.
• Active membership in at least one state bar and registration with USPTO required.

Contact:
Apply online by visiting this link: https://searchlight.cluen.com/E5/(S(i3fayk45nutdidiuwezis355))/Login.aspx?URLKey=7xl7vhxw&type=logoff. Please specify Patently-O Jobs in the “how did you hear about us” section. For more information about our firm, please visit www.axiomlaw.com.

Additional Info:
Employer Type: Law Firm
Job Location: Remote (anywhere)

Computer Engineering & Software IP Attorney – Law Firm – Washington, DC

February 21, 2012- US - MidAtlantic and South, Emp - Law Firm, Tech - Any / Other, Tech - Electrical, Tech - Mechanical, Work - Patent Prosecution

Technical Advisor – Law Firm – Flexible Location

February 15, 2012- US - MidAtlantic and South, - US - Midwest, - US - Northeast, - US - Silicon Valley & SF, - US - West, Emp - Law Firm, Work - Patent Prosecution

Fish & Richardson P.C. is a leading global law firm practicing in the areas of intellectual property, litigation and technology law. We are seeking technical advisors to work in our domestic offices or remotely as independent contractors.

Responsibilities:
Technical advisors work side-by-side with other members of the firm’s legal staff and engage in all activities related to patent prosecution. Prosecution activities involve preparation of patent applications and subsequent interaction with the patent office, which can include significant interaction with both inventors and examiners at the patent office and provides exposure to many different clients and a variety of cutting-edge technologies.

Daily tasks may involve meeting an inventor to learn about a new idea, reviewing pertinent background literature, drafting patent applications, or preparing correspondence with the patent office regarding scope or novelty of an idea. Technical advisors can take on significant levels of responsibility over time based on their technology background and the patent-related experience they gain at Fish.

Qualifications:
Strong technical background in Computer Science, Electrical Engineering, or Physics. Advanced degree and prior experience in patent prosecution are preferred. Excellent writing skills and academic credentials are required.

Location:
We are currently considering candidates for the following offices:
- Atlanta
- Boston
- New York
- Silicon Valley
- Twin Cities
- Washington, DC

We will consider candidates who wish to work remotely as independent contractors. Independent contractors must have prior industry and/or law firm experience and the proven ability to work independently. Must be available during regular business hours, occasionally attend in-office meetings, and visit client sites and the Patent Office, as needed.

Contact:
To apply, please submit cover letter, resume, transcripts and writing sample to Recruiting@fr.com. Please note work location preference in your cover letter.

Additional Info:
Employer Type: Law Firm
Job Location: - Atlanta, Georgia; Boston, Mass.; New York, New York; Silicon Valley, California; Twin Cities, Minnesota; Washington, DC

Mid- to Senior-Level Patent Prosecution Associate – Law Firm – Dallas, Texas

February 14, 2012- US - Midwest, Emp - Law Firm, Tech - Electrical, Tech - Mechanical, Work - Patent Prosecution

Klemchuk Kubasta, LLP has expanded its prosecution and technology client base, and as a result, needs a mid- to senior-level prosecution associate to assist in handling case intake, drafting applications and office action responses, and managing patent portfolios all with minimal supervision. At least 4 years of solid patent prosecution experience is required. This position will involve patent litigation support, including infringement and Markman analysis. Although not required, we prefer candidates with mechanical engineering, electrical engineering, software engineering, or computer science backgrounds. Big firm experience is a plus as is industry, technical, or design experience before law school. This position will involve immediate client contact, so social polish is needed as well.

Patent Attorney – Law Firm – Chicago (remote locations may be considered)

February 14, 2012- US - Midwest, Emp - Law Firm, Tech - Any / Other, Tech - Electrical, Tech - Mechanical, Work - Licensing / Other Corporate, Work - Patent Prosecution