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Patent Counsel
Location : California, San Francisco
Refer job # GKJC337581
 
Job Responsibilities and Requirements: In this position, the Patent Counsel provides intellectual property (IP) legal services to clients primarily in the computer software and hardware arts. Responsibilities for this position include but are not limited to: Preparation and prosecution of U.S. and foreign patent applications. Advising clients on freedom to operate in view of 3rd-party patents. Assisting in drafting and negotiating agreements, including licenses, joint development agreements, technology agreements, and nondisclosure agreements. Providing IP subject matter expertise to commercial attorneys. Assessing claims involving intellectual property rights by and against 3rd parties. Advising clients in the development and implementation of intellectual property protection strategies to support the needs of individual business units. Job Requirements: Qualifications Required Qualifications: Juris Doctorate degree and undergraduate, or graduate, degree in applicable engineering or science, preferably in electrical engineering or computer science. Admission to practice before U.S. Patent and Trademark Office and admission to at least one State or District of Columbia Bar. Three to five years of experience in drafting and prosecuting U.S. and foreign patent applications; prep and pros experience in the software arts required. Expertise in subject matter eligibility required. Experience evaluating third party patents, performing freedom-to-operate studies, and drafting freedom-to-operate opinions. Ability to implement and monitor intellectual property strategies to support business needs and make changes to such strategies as needed. Experience drafting license agreements, joint development agreements, and nondisclosure agreements having various levels of complexity. Additional Information will consider for employment qualified applicants with criminal histories in a manner consistent with the requirements of Article 49 of the San Francisco Police Code.
 
 
 
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