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Assistant Counsel, IP

Corning, NY
Full Time
Job #: 40867 Exp.: 3+ Years
Scope of Position: 
Join a team of patent attorneys and IP professionals in a center of excellence focused on quality and efficient patent preparation and prosecution. Work closely with research scientists and inventors to build and maintain a portfolio of patents and other intellectual property to advance technical and commercial interests of the company, especially in its emerging businesses, such as related to glass for automobiles.

Key Accountabilities Include:
  • Prepare and file high quality utility patent applications
  • Prosecute patent applications with the US Patent & Trademark Office
  • Meet with inventors to discuss inventive concepts and encourage thoughtful invention disclosures
  • Lead brainstorm meetings with inventors to help develop or broaden intellectual property
  • Oversee and manage outside counsel to prepare and prosecute patent applications worldwide
  • Participates in or leads improvement projects and Law Department initiatives.

Required Education and Skills:
  • BS and/or advanced degree in relevant technology (Mechanical, Chemical, Materials, Physics preferred, but other backgrounds that correspond well with our automotive glass business will be considered).
  • JD degree from an ABA-accredited law school
  • Member in good standing of state bar
  • Registered to practice before the USPTO.
  • Qualities: Very good written and verbal communication skills; ability to work independently including managing multiple simultaneous projects and large prosecution docket effectively; comfortable interacting with inventors, managers and senior leadership; great organization and prioritization skills; ability to consistently deliver timely work product; meets deadlines; dependable; interest in technology as well as patent preparation and prosecution.

Required Skills:
  • At least 3 years as a practicing patent attorney (law firm experience preferred)
  • Significant experience preparing and prosecuting patents, including supervision of foreign counsel.

Desired Skills:
  • Experience performing risk analyses and drafting infringement and validity opinions.
  • Prior technical or patent examiner experience e.g., engineering or other technical role in industry
  • Experience in litigation or USPTO or other patent office procedures

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