Patent Prosecution Paralegal – Government – Albuquerque, N.M.

January 17, 2018- US - Southwest, Emp - Government, Tech - Any / Other, Tech - Biotech, Tech - Chemical / Pharma, Tech - Computer Science, Tech - Electrical, Tech - Mechanical, Work - Patent Prosecution, Work - Regulatory

The Intellectual Property Center within the Legal Division at Sandia National Laboratories is looking for an experienced Patent Paralegal to join their highly talented team. The position requires excellent organizational, problem solving and priority setting skills. Experience working with and understanding of the rules and regulations set forth by the United States Patent & Trademark Office, (USPTO) are essential to success in this position. The position requires reviewing and acting upon materials received from USPTO, preparing draft materials responsive to USPTO for attorney review and/or completion, maintaining attorney dockets, maintaining patent database (database entry, errors checks), and maintaining hardcopy files. The successful applicant will act as primary support for one or more patent prosecution attorneys, including preparing materials for attorneys' signature (missing parts, certificates of correction, engagement letters, etc.), calculating filing fees, conducting database searches for attorneys (reference prior art, private PAIR, etc.), filing materials in USPTO in accordance with federal rules, maintaining USPTO deposit account, and coordinate payment of patent maintenance fees.

The successful candidate will be adept at meeting frequent deadlines with constant interruptions while maintaining a high level of accuracy and attention to detail. Excellent written and oral communication skills; demonstrated ability to work with and appropriately protect sensitive, proprietary and confidential information; and the ability to work in a team environment while exercising independent judgment and interact effectively with peers and all levels of management are necessary.

This job series typically:

Provides high-level paraprofessional legal support to in-house attorneys and external co-counsel retained to represent Sandia Corporation. Works under attorney supervision but with a high degree of independence to provide paralegal and administrative support of a responsible and confidential nature and helps ensure the smooth functioning of legal matters and projects.
Works cooperatively with Sandia staff to ensure appropriate document management, protection, retention, and disposition in accordance with applicable policies and procedures.
Further develops and maintains Sandia's records and database files, including scanning and coding documents into Sandia databases.
Conducts computerized searches for information.
Remains current on processes and procedures in applicable court and administrative forums.
Ability to prioritize and adjust to changing priorities, problems, and deadlines.
Ability to work independently.
Knowledge of Sandia's organization, history, policies, and procedures.
Computer application and database skills.
Demonstrated accuracy and judgment and a high degree of initiative, discretion, diplomacy, confidentiality, and flexibility.
Ability to meet deadlines.
Knowledge of protocol.
Adept at adjusting to changing priorities, problems, and deadlines.

Required:

High school graduate, that meets state-mandated educational, training or work experience requirements.
Minimum of 3 years of direct experience working in a patent prosecution environment within a law firm or in-house.
Must have experience with USPTO rules and procedures, patent docketing and supporting attorneys.

Desired:

Paralegal degree preferred.
Experience with IP Management software (i.e. Thompson Rueters IP Manager).
Proficient with Microsoft Applications (Word, Excel, PowerPoint, CRM and Outlook) , Adobe and SharePoint.

Department Description:
The Intellectual Property Center within the Legal Division is responsible for Sandia National Laboratory Copyrights, Export Control, Intellectual Property, Intellectual Property Counseling, Invention Disclosures, Patents Publications, Review & Approval Trademarks.

About Sandia:
Sandia National Laboratories is the nation’s premier science and engineering lab for national security and technology innovation, with teams of specialists focused on cutting-edge work in a broad array of areas. Some of the main reasons we love our jobs:

Challenging work withamazingimpact that contributes to security, peace, and freedom worldwide
Extraordinary co-workers
Some of the best tools, equipment, and research facilities in the world
Career advancement and enrichment opportunities
Flexible schedules, generous vacations,strongmedical and other benefits, competitive 401k, learning opportunities, relocation assistance and amenities aimed at creating a solid work/life balance*

World-changing technologies. Life-changing careers. Learn more about Sandia at: http://www.sandia.gov

*These benefits vary by job classification.

Security Clearance:
Position requires a Department of Energy (DOE)-granted L-level security clearance.

Sandia is required by DOE directive to conduct a pre-employment drug testing, and a pre-employment background review that includes personal reference checks, law enforcement record and credit checks, and employment and education verifications. Applicants for employment must be able to obtain and maintain a DOE L-level security clearance, which requires U.S. citizenship.

Applicants offered employment with Sandia are subject to a federal background investigation to meet the requirements for access to classified information or matter if the duties of the position require a DOE security clearance. Substance abuse or illegal drug use, falsification of information, criminal activity, serious misconduct or other indicators of untrustworthiness can cause a clearance to be denied or terminated by the DOE, rendering the inability to perform the duties assigned and resulting in termination of employment.

EEO Statement:
Equal opportunity employer/Disability/Vet/GLBT

Contact
To apply, please visit this website: https://sandia.jobs/albuquerque-nm/patent-prosecution-paralegal-experienced/8A4CCC18A1B84DE39D1B836EDB03F9D3/job/?utm_campaign=DE-Pilot&utm_medium=JOBS&utm_source=patentlyo&utm_medium=JOBS&utm_campaign=DE-Pilot

Additional Info
Employer Type: Government
Job Location: Albuquerque, New Mexico

Patent Counsel – Large Corporation – Mountain View, Calif.

November 7, 2017- US - Silicon Valley & SF, Emp - Corporate (in-house), Work - Licensing / Other Corporate, Work - Patent Litigation, Work - Patent Prosecution, Work - Regulatory

intuit Intuit is looking for a talented patent attorney experienced in strategic patent portfolio generation, as well as advising legal and business teams on the same, to join our dynamic Intellectual Property Practice Group. You'll be one of the primary legal contacts partnering with Intuit's business units on patent related matters.

Primary duties will include developing and maintaining client relationships, driving growth of Intuit’s patent program, which includes development of patent strategy, solicitation and evaluation of invention disclosures, and supervising outside patent counsel. This position also provides transactional IP support, manages IP related third party disputes, patent litigation support, and handling various patent and technology related matters as they arise.

Additional responsibilities may include patent licensing matters and IP support for mergers and acquisitions. Opportunity exists to gain experience in other areas of law, as well as leadership experience.

This is a fantastic opportunity to join a company with a strong innovation culture and be part of an exciting group that is in the process of growing a strong intellectual property program.

Responsibilities:

World-wide patent portfolio growth within Intuit's businesses
Regularly interact with business leaders and creative teams
Manage outside patent counsel in preparation and prosecution of patent applications
Support patent litigation; IP support for M&A projects
Legal support for use of, and contribution to, open source by engineering teams
Provide IP related transactional support
Lead and/or participate in IP Team and Legal Department initiatives

Qualifications:

Experienced patent portfolio manager
Proven ability in working with creative teams to discover innovative work
Experience supporting IP litigation, M&A
Experience in supporting contract and transactional teams
Experience with open source licensing is a plus
A mix of law firm and in-house experience

Requirements:

At least 5 years of experience as a patent attorney
USPTO registered patent attorney, licensed in California
Undergraduate degree in Computer Science, Electrical Engineering, or IT related field
At least 2 years of experience with patent preparation and prosecution

The ideal candidate has proven good business judgement, confidence in influencing decision making processes, effective communication and presentation skills, and business focused client counseling. Must be adept at balancing risk and opportunity, creative problem solving, and working with the business to make smart decisions. Must have a sense of humor.

Imagine a career where your creative inspiration can fuel BIG innovation. Year-over-year, Intuit has been recognized as a best employer and is consistently ranked on Fortune's "100 Best Companies To Work For" and Fortune World's "Most Admired Software Companies" lists. Immerse yourself in our award winning culture while creating breakthrough solutions that simplify the lives of consumers and small businesses and their customers worldwide.
Intuit is expanding its social, mobile, and global footprint with a full suite of products and services that are revolutionizing the industry.

Utilizing design for delight and lean startup methodologies, our entrepreneurial employees have brought more than 250 innovations to market – from QuickBooks® and TurboTax®, to GoPayment, Mint.com, big data, cloud (SaaS, PaaS) and mobile apps. The breadth and depth of these customer-driven innovations mean limitless opportunities for you to turn your ingenious ideas into reality at Intuit.
Discover what it's like to be part of a team that rewards taking risks and trying new things. It's time to love what you do! Check out all of our career opportunities at: careers.intuit.com.

EOE AA M/F/Vet/Disability

Intuit will consider for employment qualified applicants with criminal histories in a manner consistent with requirements of local law.

Contact
To apply, please visit this website: http://careers.intuit.com/job-category/12/legal/job/00129753/patent-counsel.

Additional Info
Employer Type: Large Corporation
Job Location: Mountain View, California

Associate – Law Firm – Gainesville, Fla.

July 18, 2017- US - MidAtlantic and South, Emp - Law Firm, Tech - Biotech, Tech - Chemical / Pharma, Tech - Computer Science, Tech - Electrical, Tech - Mechanical, Work - Licensing / Other Corporate, Work - Patent Litigation, Work - Patent Prosecution, Work - Regulatory

Patent-Arts, PLLC, a unique boutique IP firm located in Gainesville, Florida, is seeking an EE Patent Attorney or Agent to complement strong life sciences capabilities in the firm and help grow the business.

Intellectual Property Attorney – Small Corporation – Boca Raton, Fla.

June 20, 2017- US - MidAtlantic and South, Emp - Corporate (in-house), Tech - Biotech, Tech - Chemical / Pharma, Work - Patent Prosecution, Work - Regulatory

TherapeuticsMD is seeking an intellectual property attorney. Under the direction of the General Counsel, the IP Counsel will primarily provide patent drafting and prosecution support to the Company, including planning and execution of life cycle management technologies.

This position is located at the Boca Raton, Florida company headquarters. There will be opportunity to work on diverse legal matters such as business-strategic protection of IP, licensing, IP litigation management/support, dispute settlement, regulatory exclusivity, and contracts. It is anticipated that no more than 15% domestic travel may be required.

Qualifications:

BS or higher degree in organic chemistry, biochemistry, chemical engineering (pharma), molecular biology, or comparable technologies
JD degree and licensed to practice in at least one US jurisdiction
Registered as patent attorney at USPTO
5+ years of experience in US patent prosecution and IP legal practice
Experience prosecuting foreign patents
Experience with patent portfolio development, licensing, and enforcement in a corporate context is highly desirable
Hatch-Waxman experience is highly desirable, including a well-rounded understanding of regulatory exclusivity and the intersection between IP and the FDA regulatory environment

Other Required Skills:

Demonstrated ability to write and prosecute clear patent applications, amendments, legal and business documents
Demonstrated ability to efficiently prosecute patent applications
Legal creativity and the ability to think originally
Strong oral communication skills
Ability to analyze patentability and patent freedom-to-operate matters
Technical competence in one or more of the following fields: Organic Chemistry, Biochemistry, Chemical Engineering (pharma), Molecular Biology, or comparable technologies, is required.
Candidates having prior experience prosecuting pharmaceutical/small molecule are preferred.

TherapeuticsMD is an equal opportunity employer. All qualified applications will receive consideration for employment without regard to race, color, religion, sex, national origin, protected veteran status, or disability status.

Contact
To apply, please email legal@therapeuticsmd.com.

Additional Info
Employer Type: Small Corporation
Job Location: Boca Raton, Florida

Patent Agent – Large Corporation – Chelmsford, Mass.

March 29, 2017- US - Northeast, Emp - Corporate (in-house), Tech - Biotech, Tech - Electrical, Tech - Mechanical, Work - Regulatory

ZOLL Medical Corp is seeking a licensed patent agent to be located at the ZOLL Medical headquarters in Chelmsford, MA. The candidate will work with ZOLL’s Pittsburgh entities and be responsible for US patent prosecution, drafting patent applications and supervising foreign patent counsel. The candidate will also be a key interface with engineers and technical staff in the identification, collection, and review of ideas for patentability. The position will report to the IP Counsel responsible for ZOLL’s Pittsburgh Intellectual Property Portfolio. This position will require travel to Pittsburgh, PA is needed.

IP Attorney (Associate / Partner) – Law Firm – Multiple Locations

November 7, 2016- Europe, - US - MidAtlantic and South, - US - Northeast, Emp - Law Firm, Tech - Biotech, Tech - Chemical / Pharma, Tech - Computer Science, Tech - Electrical, Tech - Mechanical, Work - Licensing / Other Corporate, Work - Patent Litigation, Work - Patent Prosecution, Work - Regulatory

The McHattie Law Firm, a dynamic and “quirky” boutique law firm specializing in intellectual property, general corporate, litigation and employment law, seeks a patent attorney with 5+ years of substantive patent prosecution and an alternative discipline (general corporate, litigation, employment, immigration) experience on a full or part-time basis. The attorney should be experienced in one or more technical patent prosecution area, including by way of example, medical devices, electrical engineering, iot, communications, data management, robotics, software architecture or mechanical engineering.

Patent Attorney – Law Firm – Waltham, Mass.

August 8, 2016- US - Northeast, Emp - Law Firm, Tech - Biotech, Work - Patent Prosecution, Work - Regulatory

Morse, Barnes-Brown & Pendleton, P.C., a respected corporate and IP law firm, is seeking a mid-level to senior Patent Attorney with substantial experience (4-7 years) in patent prosecution and client counseling in biotechnology-related fields to join our successful and growing patent practice. Experience in IP due diligence a plus. Candidate should have strong qualifications in biochemistry, microbiology, molecular biology, immunology and/or cell biology; advanced degree preferred. Excellent written and verbal communication skills are required.

Patent Counsel – Large Corporation – Memphis, Tenn.

June 12, 2016- US - MidAtlantic and South, - US - Midwest, Emp - Corporate (in-house), Tech - Biotech, Work - Licensing / Other Corporate, Work - Regulatory

Medtronic is seeking a Patent Counsel II to work in its Memphis offices.

Responsibilities & Requirements

Develops and maintains intellectual property assets of the company including patent applications, trade secrets, trademarks, copyrights, licensing and research agreements, publications and intellectual property aspects of contracts and agreements.
Prepares legal opinions and analysis of patents; reviews and drafts significant corporate legal documents. Evaluates the validity of competitors’ patents and potential company product infringement upon valid patents of competitors.
Responsible for pre-patent filing review, providing legal advice to the company concerning the patentability of its inventions and the advisability of filing patent applications covering the company’s inventions.
Provides other general legal advice and represents the company in matters relating to intellectual property law.
Requires undergraduate or graduate engineering or science degree and law school (J.D.) degree, and admission to practice in at least one state.

Minimum Education Requirements

A Juris Doctor from a recognized, accredited U.S. law school and licensed to practice in at least one state or the District of Columbia with the ability to ultimately be admitted in Tennessee; registered to practice before the U.S. Patent and Trademark Office.
Must have a minimum of 4-8 years of related experience with a Bachelors or Masters degree in Biomedical Engineering, Chemical Engineering, Civil Engineering, Metallurgical Engineering, Mechanical Engineering, Electrical Engineering, Electrochemical Engineering, Material Science, Physics, or other engineering or related sciences.
Proven ability to apply practical patent experience and render legal advice involving spinal/orthopedic and/or other medical device technology along with some Patent Litigation and Post-grant proceeding experience is preferred.

Functioning Factors

Knowledge: Applies mastery of in-depth legal knowledge in one job family or broader intellectual property expertise in most areas of a job function. Helps set strategic direction and demonstrates global business acumen while thinking critically and making sound decisions.
Problem Solving: Focuses on patient and customer in developing solutions to complex problems that may generate breakthrough ideas or require the regular use of ingenuity and creativity. Initiate and lead change to ensure that solutions are consistent with organization objectives.
Discretion / Latitude: Work is performed without appreciable direction. Exercises considerable latitude in determining deliverables of assignment. Completed work is reviewed from a relatively long-term perspective, for desired results. May provide guidance about work activities to colleagues.
Impact: Contributes to defining the direction for new products, processes, standards, or operational plans based on business strategy with a significant impact on work group results. Sets high standards, instills operational excellence, drives accountability and models ethical behavior. Failure to obtain results or erroneous decisions or recommendations would typically result in serious impact on business results and expenditures.
Liaison: Frequent interaction with internal or external contacts at various organizational levels concerning ongoing intellectual property matters. Collaborates with others and creates alignment while fostering diversity and inclusion amongst partners, customers, clients and peers.
Adhere to the Medtronic Leadership Expectations of Shape, Engage, Innovate, and Achieve.

Other Skills & Abilities

Strong communication skills, both oral and written
Good interpersonal skills
Ability to work in a fast paced environment
Ability to work well under pressure and maintain positive, enthusiastic attitude
Eagerness to learn and expand responsibilities
Ability to work effectively in a dynamic environment and to build strong working relationships.
Some travel may be required.

Contact
Apply online via this link: http://jobs.medtronic.com/jobs/patent-counsel-ii-8295.

Additional Info
Employer Type: Large Corporation
Job Location: Memphis, Tennessee

Patent Agent – Law Firm – North Brunswick, N.J.

April 7, 2016- US - MidAtlantic and South, - US - Northeast, Emp - Corporate (in-house), Tech - Biotech, Tech - Chemical / Pharma, Work - Licensing / Other Corporate, Work - Patent Litigation, Work - Patent Prosecution, Work - Regulatory

Chromocell seeks an experienced Patent Agent who has earned a Ph.D. or minimum Masters’ Degree in chemistry, biology or a related field (organic/medicinal chemistry education/experience preferred). The ideal candidate will be registered to practice before the U.S. Patent and Trademark Office or previous work experience at USPTO. This is a unique opportunity to be the only patent agent onsite, interfacing with scientists and key stakeholders on a daily basis.

Essential Responsibilities

Assist with maintenance of the existing patent and trademark estates.
Review applications, office actions responses, amendments and other prosecution documents drafted by outside counsel.
Draft applications, office action responses, amendments and other prosecution documents for patents managed in house.
Participate in and help formulate intellectual property and patent strategy with business and legal team and, in support of key collaborations.
Assist with IP-related services in support of the company’s business and research activities, including: searching and providing guidance/opinions regarding patentability, freedom-to-operate, patent invalidity and non-infringement, performing due diligence, and managing procurement of opinions by outside counsel.
Patent summaries and analysis in support of research efforts.
Depending on interest, opportunity to assist with agreements relating to a variety of intellectual property matters, including confidentiality agreements, consulting agreements, collaboration and licensing agreements, as well as trademark and copyright prosecution.
Supervise paralegal’s docketing and maintenance of existing patent portfolio.
Other duties as may be assigned.

Desired Skills and Experience

3 years patent experience at a law firm or in-house with a biotechnology, pharmaceutical or flavors company.
Ph.D. or minimum Masters’ Degree in a chemistry, biology or a related field (organic/medicinal chemistry education/experience preferred).
Registered to practice before the U.S. Patent and Trademark Office or previous work experience at USPTO.
Read, analyze, and interpret scientific and technical journals, scientific data, patent documents, governmental regulations, and legal documents.
Draft well-organized and understandable patent applications and persuasive responses to office actions.
Prepare concise and understandable written and oral summaries and recommendations for IP strategy for the scientific, business and legal staff.
Work as a team member with employees in other departments, with different educational backgrounds and job responsibilities.
Responsive, dependable, flexible and attention to detail.
Flavors experience a plus.

Contact
To apply, please visit this link: http://chc.tbe.taleo.net/chc01/ats/careers/requisition.jsp?org=CHROMOCELL&cws=1&rid=292.

Additional Info
Employer Type: Small Corporation
Job Location: North Brunswick, New Jersey

Patent Counsel – Large Corporation – Warsaw, Ind.

October 21, 2015- US - Midwest, Emp - Corporate (in-house), Tech - Biotech, Tech - Electrical, Tech - Mechanical, Work - Licensing / Other Corporate, Work - Regulatory

Zimmer Biomet is seeking a patent counsel to work in its Warsaw, Indiana, offices.

Responsible for:

working with development teams and providing advice regarding patent review and design options, claim coverage, and other issues that effect the design and development of orthopaedic devices;
management of preparation and prosecution of patent applications covering the products under development; and
providing education to design and marketing teams on basic patent law issues.

Principal Duties and Responsibilities

Strategically manage patent portfolio including managing outside counsel regarding patent prosecution, and evaluating new invention disclosures for filing
Integrate with design and marketing teams to anticipate patent issues and assist in providing patent perspective and advice that enables management to make business decisions.
Coordinates with outside counsel to assure legal services are rendered to the corporation that are results-oriented, timely, competent, and cost efficient.

Expected Areas of Competence

Develops close working relationships with clients in which corporate goals and priorities are maintained without compromising legal integrity.
Contributes to a high performance culture through effective communication and leadership with management, engineering, marketing, clinical trial teams and other business functions.
Works cooperatively with peers to leverage skills and knowledge within the legal division.
Communicating effectively to a diverse audience, at multiple levels within the Company, through various formats, i.e. presentations, written proposals, reports, correspondence, leading meetings, face-to-face dialogue, etc.

Education/Experience Requirements

Must possess a JD degree and be registered to practice in the U.S. Patent Office.
An undergraduate degree in engineering and/or a background working with mechanical or bio-mechanical devices is preferred.
Minimum of 3 years of experience in patent practice including foreign and domestic prosecution is required.
Organization, communication and management skills are required to ensure the efficient and accurate delivery of services to the company.
Must have passed a state bar examination and be a registered patent attorney.

Travel Requirements

Up to 20%

Additional Information

EOE/M/F/Vet/Disability

Contact
Apply online by visiting this link: http://www.zimmer.com/careers/search/job-details.html?nPostingId=6108&nPostingTargetId=17971&id=QCVFK026203F3VBQBV7V47VNG&LG=EN&mask=zimextus.

Additional Info
Employer Type: Large Corporation
Job Location: Warsaw, Indiana

Patent Counsel – Large Corporation – Richmond, Va.

September 1, 2015- US - MidAtlantic and South, Emp - Corporate (in-house), Tech - Chemical / Pharma, Work - Licensing / Other Corporate, Work - Patent Litigation, Work - Regulatory

Tredegar Corporation is seeking a Patent Counsel who will report to the Company’s General Counsel and be based in the Company’s Richmond, Virginia headquarters. This individual will lead all activities associated with the Company’s intellectual property initiatives. The Patent Counsel will be a strategic partner to the Company’s business units and play a critical part in the Company’s product innovation process, advising design and development teams and business leaders throughout the product life cycle.

Patent Attorney / Agent – Law Firm – Washington, D.C.

June 11, 2015- US - MidAtlantic and South, Emp - Law Firm, Tech - Biotech, Tech - Electrical, Tech - Mechanical, Work - Patent Agent, Work - Patent Litigation, Work - Patent Prosecution, Work - Regulatory

DTI, a leading legal process outsourcing firm, is seeking Patent Attorneys and Patent Agents to place at the Washington DC office of a leading global intellectual property law firm. These are temporary-to-permanent positions with challenging work, competitive compensation, and a great work environment.

US Patent Attorney/Agent – Law Firm – Seoul, Korea

May 28, 2015- Asia, Emp - Law Firm, Tech - Electrical, Tech - Mechanical, Work - Patent Agent, Work - Patent Prosecution, Work - Regulatory

Lee International IP & Law Group, one of the most prestigious law firms in Seoul Korea, is seeking a US patent attorney and a US patent agent with a minimum of 2 years of experience (law firm/in-house/USPTO) in the drafting and prosecuting patent applications in the area of electrical and/or electro-mechanical engineering to work in our office in Seoul, Korea. Excellent writing and oral skills are required. Responsibilities will include communicating effectively with foreign-based clients, editing English translation of Korean patent application, US patent prosecution docket and US patent application drafting. All candidates must possess either a BSEE or BSME degree and admission to practice before the USPTO as a patent attorney/agent. Bilingual (English and Korean/Mandarin/Japanese) skill is a definite plus. Salary will be commensurate with experience.

Patent Attorney – Law Firm – Waltham, Mass.

March 19, 2015- US - Northeast, Emp - Law Firm, Tech - Biotech, Work - Patent Prosecution, Work - Regulatory

Patent Attorney – Law Firm – Omaha, Neb.

February 23, 2015- US - Midwest, Emp - Law Firm, Tech - Any / Other, Tech - Biotech, Tech - Chemical / Pharma, Tech - Electrical, Tech - Mechanical, Work - Licensing / Other Corporate, Work - Patent Prosecution, Work - Regulatory

As the oldest and largest locally based law firm in Omaha, Nebraska, Baird Holm LLP is annually recognized as one of the preeminent law firms in the region. Our people are the defining factor that sets our firm apart from others. We believe that collaboration, diversity, and passion for the law bring our clients world-class solutions to real-world challenges. Since 1873, Baird Holm has constantly evolved to meet the changing needs of our clients— we represent leading and emerging companies, and take pride in offering a diverse, collaborative team of attorneys who are committed to professional excellence in a collegial environment.

Patent Counsel – Large Corporation – Arden Hills, Minn.

November 9, 2014- US - Midwest, Emp - Corporate (in-house), Tech - Biotech, Tech - Electrical, Tech - Mechanical, Work - Patent Litigation, Work - Regulatory

Boston Scientific Corporation is seeking a Patent Counsel to work in its Arden Hills, Minnesota, offices. This person provides legal advice and service on patent, copyright, and trademark matters; evaluates patents and potential product infringement issues; prepares or oversees outside counsel's preparation of patent applications for filing in the U.S. Patent Office; and represents the company in matters relating to intellectual property law, and provides other general legal advice where required.

Responsibilities

Directs the company's patent, copyright, trademark and intellectual property legal work.
Prepares or directs the preparation and prosecution of the U.S. and foreign patent and trademark applications.
Reviews Outside Counsel work to ensure the work, methodology, and costs meet Boston Scientific’s expectations.
As directed, reviews third party patents for product clearance issues.
Facilitates the patent committee meetings by leading discussions, managing action items and delegating responsibility for follow-up items to committee members ensuring resolution of agenda topics.
May supervise exempt or nonexempt employees, and manage employee career counseling, performance evaluation, discipline, and time and attendance issues when required.
Provides legal advice in preparing and reviewing confidentiality, research, consulting, and other agreements.
Provides advice on marketing and promotional material.
Conducts IP related diligence on companies and/or third party patent portfolios for possible acquisition or licensing analysis.

Quality System Requirements

In all actions, demonstrates a primary commitment to patient safety and product quality by maintaining compliance to the Quality Policy and all other documented quality processes and procedures.
For those individuals that supervise others, the following statements are applicable: Assures that appropriate resources (personnel, tools, etc.) are maintained in order to assure Quality System compliance and adherence to the BSC Quality Policy. Establishes and promotes a work environment that supports the Quality Policy and Quality System.

Qualifications

J.D. admitted to a state bar in good standing
Registered Patent Attorney
Strong academic background
BS in Electrical Engineering or Physics or Biomedical engineering with significant electrical engineering/computer science coursework.
Medical Device experience preferred
At least one year of IP Litigation practice exposure
3-5 years of law firm or corporate department IP practice experience
At least 2 years of experience drafting and prosecuting patent applications in the area of electrical and computer sciences

Contact
Apply online by visiting this link: https://career4.successfactors.com/sfcareer/jobreqcareer?jobId=98822&company=BScientific&username=.

Additional Info
Employer Type: Large Corporation
Job Location: Arden Hills, Minnesota

IP Attorney – Large Corporation – Bloomington, Minn.

September 25, 2014- US - Midwest, Emp - Corporate (in-house), Tech - Electrical, Tech - Mechanical, Work - Licensing / Other Corporate, Work - Patent Litigation, Work - Regulatory

Seagate is searching for an Intellectual Property Attorney for one of our facilities, preferably to be located in the following locations: Bloomington or Shakopee MN, Fremont, CA, or Longmont, CO. This role will report to our IP Associate General Counsel.

The Seagate Technology Intellectual Property Team handles all patent, trademark, domain name, trade secret and copyright matters, including IP strategy, client counseling and training, prosecution and enforcement. The team also supports IP litigation. The team includes IP professionals and staff located in six offices worldwide, and interacts with outside entities, outside counsel, and clients across the organization to capture, protect and use intellectual property in support of Seagate’s business strategies. The Intellectual Property Team is part of the Seagate Technology Legal Department.

Specific duties of the position may include:

Client counseling on intellectual property matters including integrating intellectual property considerations into business plans, enterprise intellectual property risk management and mitigation strategies, and strategies for enhancing the scope and strength of our intellectual property portfolio;
Technical responsibility areas may specifically include magnetic recording media, digital communications, and areas related to signal processing; and generally data storage;
Transaction support including technology licensing agreements, acquisitions, divestitures and strategic alliances;
Patent, trademark, copyright, domain name, and trade secret surveillance and enforcement, and leveraging combined intellectual property assets into comprehensive positions for protecting and advancing associated business initiatives;
Supervising outside counsel in preparation and prosecution of patent and trademark applications both domestically and internationally;
In cooperation with the Seagate litigation team, advising clients on potential and pending litigation;
Conducting white space, freedom to operate and similar analyses to inform business plans/products;
Evaluating potential IP licensing opportunities and provide recommendation;
Drafting and negotiating IP-related joint development, licensing, non-disclosure, and know-how agreements;
Collaborating with and advising corporate contracts and litigation group, as necessary, in intellectual property based transactions, examples of which include independent contractor agreements, supply agreements, and marketing agreements;
Preparing and conducting IP-related client training;
Managing invention generation, review and prosecution via facilitated focused invention sessions, brainstorms, and strategic IP harvests;
Managing and coordinating invention disclosure review and formulating portfolio-specific intellectual property strategy with respective invention review boards; and
Managing the associated budget.

The successful candidate will possess the following:

A Juris Doctorate from an accredited law school with 3 years' experience;
Good standing in the bar(s) where licensed to practice law with preference for licensure in Minnesota;
3 years minimum legal experience in a wide range of intellectual property matters including patent preparation and prosecution, trademark matters, due diligence activities, licensing or merger and acquisitions, IP litigation support, patent portfolio management and client counseling, preferably with experience at both a law firm and a corporation;
Registration with the USPTO;
A Bachelor of Science degree in electrical engineering, computer engineering or related field is desired; background in physics, material science, or chemistry will be considered;
Strong communication skills - ability to convey and discuss intellectual property issues in understandable terms and to establish, manage and leverage relationships with management, co-workers, relevant technical community, and internal and external partners;
Creative thinking and problem solving in a high volume and fast-paced environment, as well as demonstrated ability to lead or collaborate with others across multiple discipline areas to achieve tangible results;
Taking initiative, doing more than is expected;
Results-oriented team player skills, who works best in a collaborative environment; and
Ability to travel both domestically and internationally as necessary.

Contact
Apply online via this link: https://seagate.taleo.net/careersection/2/jobdetail.ftl?lang=en&job=147176.

Additional Info
Employer Type: Large Corporation
Job Location: Bloomington, Minnesota

Patent Counsel – Large Corporation – Phoenix, Ariz.

August 15, 2014- US - Southwest, - US - West, Emp - Corporate (in-house), Tech - Biotech, Work - Licensing / Other Corporate, Work - Regulatory

W.L. Gore is looking for a highly experienced Intellectual Property (IP) Counselor to join our corporate patent team in Phoenix, AZ. Associates in our corporate functions support the work done by the divisions of Gore.

If you are looking for a company where you can make a difference, we're looking for you. In this role, you will advise business and technical leaders and teams, primarily in our Medical Products Division, on third party Intellectual Property (IP) risks and risk mitigation strategies in support of new product initiatives. You will be a member of the Clearance & Opinion Center of Excellence within the Gore patent team.

The ideal candidate will

Be passionate about providing IP counsel support for a world-class manufacturer
Be energized by collaborating on cross-functional teams
Recognize the importance of building and maintaining strong interpersonal relationships

Responsibilities include

Advising cross-functional teams and businesses, and R&D leadership about exclusivity, freedom to operate, due diligence, patent marking and potential patent infringement issues
Providing a strategic divisional and/or Enterprise view with respect to IP risk while addressing the needs of individual businesses
Executing freedom to operate analysis in concert with product development processes
Analyzing risks with appropriate consideration of business objectives and the environment
Developing sound tactical approaches to minimizing adverse impact of third party IP
Participating in the creation and implementation of new risk management policies and procedures
Evaluating and opining on potential infringement of Gore patents
Initiating and overseeing measures to invalidate third party patent rights (e.g. Post grant proceedings, opposition, etc.) where appropriate
Effectively communicating legal advice and analysis to associates with varying degrees of IP and technical (R&D) experience
Prioritizing and managing multiple projects across various business units
Contributing to implementation of new policies and procedures within the Enterprise and the Legal team
Efficiently engaging and managing external counsel including, analyzing, reviewing and evaluating the quality, cost-effectiveness and scope of work performed
As needed, leading or participating in due diligence, licensing, or inter partes matters

Required Job Qualifications

Juris Doctor (J.D.) from an accredited U.S. law school
Member of the bar of at least one state
Registration to practice before the USPTO
Minimum of 8 years of patent experience, with at least 6 years of in-house experience, preferrably in the life sciences or medical device industries
Considerable experience in product clearance/freedom to operate analysis, developing associated risk mitigation strategies, and opinion drafting
Demonstrated ability to lead cross functional teams and initiate and drive multiple projects simultaneously
Business acumen with a strong track record of strategic legal thinking and behavior
Excellent written and verbal communication skills
Demonstrated ability to negotiate positive resolutions and influence business decisions
Ability to thrive within an ambiguous environment or organization
Ability to travel 20% of the time, primarily within Arizona

Desired Job Qualifications

Bachelor’s or Master’s degree in Biology, BioChem, Chemistry, or Mechanical or Chemical Engineering
Experience with U.S. and foreign post grant proceedings and oppositions
Patent litigation and IP licensing experience

Contact
For more information and to apply, please visit www.gore.com/careers and search for job number – 141369. Gore is committed to a drug-free workplace. All employment is contingent upon successful completion of drug and background screening. EEO/AA Employer (applies to all positions located in the U.S.).

Additional Info
Employer Type: Large Corporation
Job Location: Phoenix, Arizona

Gore is a technology-driven global company built on entrepreneurial innovation, integrity, and teamwork. Our diverse portfolio includes everything from high-performance fabrics and implantable medical devices to industrial manufacturing components and aerospace electronics. Through our product leadership, we've been changing lives and changing industries for more than 50 years. What can you change by joining Gore? Visit gore.com/change-life to find out.