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Our client, a thriving public medical device manufacturer, is seeking an experienced patent prosecution attorney to act as Senior Patent Counsel. This is a fantastic opportunity to join an established company with cutting-edge technology that consists of both sophisticated software and hardware. The legal team is top notch and there is little attrition in the company. They are at an exciting growth stage and revolutionizing not only the industry in which they serve, but also the way they sell to their customers.
Responsibilities will include:
Develop prosecution strategies for expansion of patent portfolio;
Prepare, prosecute U.S. and International patent applications in-house and with outside counsel;
Review invention disclosures, portfolio analyses; work with inventors and patent review committee;
Work with biomechanics, biomaterials, software and engineering teams, including proactive development of IP strategies and client counseling;
Assess IP related legal issues and provide timely counsel to business partners;
Manage patent landscape and third-party patent portfolio analysis;
Manage freedom-to-operate analysis;
Manage open source software clearance and licensing related matters;
Assist with licensing and transactional matters;
Review sales, promotional materials and programs in light of IP issues;
Assist with competitive Intelligence gathering and analysis;
Assist in post grant proceedings;
Assist in developing and implementing policies and procedures relating to IP.
This ideal candidate will possess:
6-10 years of patent prosecution experience, with at least 5 years at a major law firm; preparing, filing and prosecuting applications for patents on an international basis;
Bachelor’s Degree in Biomedical Engineering, Computer Engineering, Computer Sciences, Electrical Engineering, Mechanical Engineering or other technical degree with demonstrated ability to draft medical device and software related patent applications;
Possess an in-depth understanding of the rules, regulations and procedures of the U.S. Patent and Trademark Office in pre and post grant procedures;
(Ideally, but not required) Experience with litigation support, including developing and implementing IP strategies, and conducting infringement investigations and initial analyses;
Experience with agreements involving technology and intellectual property matters, including drafting intellectual property agreements or clauses when requested;
Possess knowledge of IP law and practice, including current judicial decisions and administrative rule changes and implementations;
J.D. from an accredited law school;
Admitted to practice before the USPTO.
Our client is would like this attorney to be self-motivated, intuitive, and have excellent organizational skills, the ability to plan and schedule their own activities, as well as work with a team to meet deadlines. S/he must have excellent analysis, evaluation, and oral and written communications skills.
Solutus Legal has been selected as the exclusive representative on this desirable search. Interested candidates, please submit resumes to email@example.com for consideration. Resumes submitted directly to our client will be forwarded to Solutus for review and evaluation.
Solutus Legal Search is the leading legal search boutique and market leader in the placement of high quality lawyers in corporations and law firms. We deliver strategic search services for our clients, as well as effective career counseling and placement services for candidates. With over 30 years of collective experience in the search business, our extensive relationships, networks and contacts... in the legal community provide our candidates with a crucial edge in landing the perfect job. In addition, our quality of clients and job opportunities is unmatched. Every recruiter at Solutus is an attorney who has practiced in either large law firms or world-class corporations. This added expertise enables our team to better understand your background and career needs and creates a high placement rate for our candidates. Our search specialties include General Counsel and all levels in-house; law firm lateral associate and retained lateral partner placements. With offices across California, Solutus services clients throughout the West Coast, U.S. and the globe.
For a current list of our in house and law firm opportunities, please visit our website at www.solutuslegal.com.