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Title
Patent Counsel
Location : California, San Jose
Refer job # VLVG337249
 
Job Responsibilities and Requirements: Responsibilities will include overseeing the preparation and prosecution of patent applications in the U.S. Patent Office and internationally. Additionally this position will provide intellectual property law guidance, including freedom to operate advice, to Company scientists, engineers, and management. Duties and Responsibilities:o Assess patent and other IP positioning of competitors (i.e., freedom to operate). Supervise and oversee outside counsel to properly prepare and prosecute patent applications in assigned area(s) of responsibility. Support execution of and Company IP strategies including patent filing and product clearance. Make recommendations to protect innovations developed in research, incubations, and invention harvests. Provide guidance and counsel regarding infringement to and Company executives as requested or deemed appropriate. Supervise and oversee outside counsel to properly draft petitions, appeals, and/or other exceptional or non-routine papers as necessary to gain allowance/issuance. Evaluate third party patent infringement claims against and/or Company subject matter areas of interest including research, products, or technologies. Occasionally assist with advising or structuring and/or negotiating in-bound or out-bound patent licenses as directed and/or requested by CIP and/or Company management. Conduct and/or direct administrative staff in the conduct of legal research directed to resolving legal and/or procedural issues encountered in the advancement of, or challenges to, Company intellectual property assets. Perform IP audits and inventories in connection with new product and process offerings consistent with Company product development and release procedures. Interact with and provide guidance to outside counsel consistent with and Company objectives and operating guidelines. Perform other duties as assigned. Characteristics and Competencies:o Fully functioning in the job with only general direction needed. Strong professional drive Strong competency with the tools, systems, and procedures required to accomplish the job. Provide regular updates to manager, and work independently and collaboratively. Work on moderately complex projects/problems/tasks and demonstrate good judgment in selecting methods and techniques for obtaining solutions. A seasoned professional with a full understanding of area of specialization who can resolve a wide range of issues in creative ways. This is the fully qualified level. May provide guidance to junior staff members with aspects of their job. Education Licensed to practice before the U.S. Patent and Trademark Office. Juris Doctorate (J.D.) strongly preferred, from an accredited law school with excellent academic performance. Bachelors Degree in the engineering or physical sciences disciplines such as electrical, mechanical, systems and controls science, physics, materials, or optics or equivalent experience. Experience in optics a plus. Experience 3 years of relevant patent experience. Must be licensed to practice before the United States Patent Office. Strongly preferred to be licensed to practice law in at least one U.S. state or the District of Columbia. Experience with physics, optics, and/or image processing strongly preferred. Experience with software patents a plus. Excellent written and verbal communication skills. Ability to translate and statistically analyze data, and effectively report problems through written and/or graphic formats. Ability to use MS Word, Excel, PowerPoint, and electronic e-mail systems, as well as on-line research tools. Excellent judgment and critical thinking skills. Ability to work well with others and to quickly assimilate complex technical and physical principles. Ability to render compelling written descriptions and arguments along with graphic explanatory devices. Excellent client/customer service ethics and skills, with an advanced understanding of client relationship-building. Ability to draft and file patent applications in a cost efficient manner. Proficient ability to plan and direct administrative staff and others in activities supporting the Companys legal work and objectives. Broad technical knowledge, familiarity with all relevant technologies. Experience in managing outside counsel. Context of the position.
 
Contact the Following Recruit Arrow Office:
Los Angeles
202 S Lake Ave, Unit 250
Pasadena, California 91101
Email: jobs@recruitarrow.com
 
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