Patent ProsecutionJob #: R0070318 Exp.: 5 - 10 Years
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Job Description Summary:
Sr. Legal Counsel, IP
Job Description: Job Responsibilities:
Independently conduct innovation capture sessions and assess patentable aspects of technical projects
Manage Outside Counsel in preparing patent applications, effectively capturing patentable technical aspects and addressing possible future technology developments
Manage prosecution of patent applications, effectively addressing patent rejections based on technical aspects and legal basis
Independently and effectively analyze patents and patent applications to identify potential value in view of patent law constraints, and to identify opportunities to improve value through further prosecution or continuation applications
Stay current with patent law changes and developments
Manage international prosecution docket
USPTO registration required
J.D, top 10% preferred
State bar registration
5-10 years of patent prosecution experience, with experience prosecuting software patents.
BS in computer engineering, electrical engineering, computer science, or equivalent industrial experience; MS preferred
Experience as a software developer or designer preferred
Knowledge of Internet and software technologies, including legal and technical experience
Ability to work well with inventors to encourage innovation
Excellent patent analysis skills, including development of non-infringement, invalidity, and claim construction positions
Very good organizational skills and attention to detail, including the ability to prioritize and multi-task without missing any pending items
Excellent written and oral communication skills
Strong relationship building and technical skills
Self-starter that works independently, loves technology, and is able to work with a distributed team of worldwide legal and business partners
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