Assistant Counsel II, Patent

New York, NY
Full Time
07-09-2019
Job #: 1912948 Exp.: 5 - 7 Years
Description:
This position, which is based in Melville, Long Island, is responsible for providing patent advice and support to a leading global prestige beauty company, including patent prosecution, opinions on validity and infringement, designing and delivering client training, negotiating and drafting technology agreements.
  • Independently prepare and prosecute US patent applications through all stages to either issuance or abandonment for inventions in chemical formulations and processes and mechanical inventions in simple packaging and components.
  • Assist outside counsel handling US and foreign patent prosecution of US-based inventions under the supervision of a VP Patent Counsel.
  • Assist in preparing opinions on validity and infringement under the supervision of a VP Patent Counsel.
  • Provide training to technologists on IP legal principles as well as various IP-related forms and processes.
  • Provide other legal assistance as needed to the SVP & Deputy General Counsel, IP on patent and other matters.

Qualifications
Minimum Education level: JD from top law school
Minimum Years of Experience: 5-7
% Travel Time: 0-5%
Required Language Proficiency: English
Licenses or Certifications: Admission in good standing to at least one State Bar and the USPTO

Additional Job Specifications (e.g., physical demands, working conditions, equipment/machinery, specific skills, etc.):
  • Undergraduate or graduate degree in chemistry, chemical engineering, biochemistry or similar; good practical working knowledge of chemistry
  • Understanding of mechanical technology sufficient to prepare and prosecute patent applications on simple packaging and components
  • Experience negotiating and drafting technology-related agreements (e.g. joint development, exclusivity, and MSAs, etc.)
  • Registered Patent attorney
  • Excellent legal and business judgment; a high degree of discretion; and excellent verbal and written communication skills.
  • Ability to form strong relationships with business leaders, including the R&D team
  • Ability to execute in a complex matrixed environment
  • Cosmetic and/or OTC industry experience preferred
  • Global experience at AM Law 200 firm and/or multi-national Fortune 1000 company preferred

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