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Senior Legal Counsel, IP

Practice Areas: Patent Prosecution Job #: 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

Job Requirements:
  • 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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