Patent CounselingExp.: 4 - 8 Years
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.
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)
Ability to multi-task a must
Highly analytical skills but must also be very interpersonal
Must be resilient and persistent
Acts/leads with human sensitivity
Displays sensitivity to metiers
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