Director, Patent Counsel

Clark, NJ
Full Time
10-14-2019
Practice Areas: Patent Counseling Exp.: 4 - 8 Years
Description:
Job Summary
  • Assess scientific literature and develop patent strategies.
  • Draft and prosecute patent applications in assigned metiers.
  • Conduct right to market patent review and clearance for new product launches
  • Collaborate with colleagues in global team setting to devise consistent patent counseling and patent filing strategies for assigned métiers.
  • Assess art and render patentability / validity legal opinions.
  • Conduct IP due diligence review for business development projects and M&As.
  • Train and develop junior members of the department.

Job Requirements
  • BS in Chemistry, Material Sciences, Chemical Engineering or similar degree with 4-8 years’ experience in patent counseling, including drafting patent applications and prosecution applications in the Patent Office. Advanced degrees preferred.
  • Admitted to the Bar of at least one state (2-5 years)
  • Admitted to practice before the US Patent Office (3-5 years)
  • Experienced in providing legal opinions (patentability and right to market)
  • Experienced in drafting and prosecuting patent applications
  • Experience in working across teams (science, legal, business)
  • Experience in working in a multinational and multicultural environment and willingness to learn, adapt, and cooperate
  • Good written and oral communication skills
  • Good analytical skills
  • Ability to take decisions and implement strategies
  • Background in consumer products, packs and devices a plus
  • Provides patentability, validity and freedom to operate legal opinions. Minimum supervision required.
  • Must be able to sit and work at computer for long periods of time.

Tasks, Duties & Responsibilities
  • Counsel General Management and scientific teams with respect to patent matters in assigned metiers
  • Proactively obtain invention disclosures and assist scientific teams in assessing patentability of their inventions
  • Analyze the prior art and develop patent strategies to best protect the company’s inventions
  • Prepares and prosecutes US patent applications throughout all stages.
  • Oversee outside counsel with respect to patent drafting and prosecution, including prosecution of foreign cases.
  • Analyze search results and provides legal counsel relating to right to market (“RTM”), patentability, and due diligence assessments
  • Manages IP-Searchers in assigned metiers, including overseeing RTM searches and analysis, as well as day to day interaction of IP-Searchers with colleagues in France as well as the scientific groups in the US.
  • Generally manages and develops assigned staff
  • Manages the patent department’s information resources and tools (e.g. library, patent searching, RTM system)

Required Competencies
  • Ability to multi-task a must
  • Manage Complexity
  • Achieves Results
  • Highly analytical skills but must also be very interpersonal
  • Demonstrates entrepreneurship
  • Must be resilient and persistent
  • Acts/leads with human sensitivity
  • Displays sensitivity to metiers

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