Patent Counsel job in San Jose, CA| Recruit Arrow
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Patent Counsel
Location : California, San Jose
Refer job # QIXI337931
Job Responsibilities and Requirements: Responsibilities: 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 Assist in assessment of IP issues, provide timely counsel on IP issues Conduct patent landscape and third-party patent portfolio analysis Conduct freedom-to-operate analysis Assist with licensing and transactional mattersReview 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 Requirements: J.D. from an accredited law school California bar Admitted to practice before the USPTO 5 years of patent prosecution experience, with at least 3 years at a major law firm; preparing, filing and prosecuting applications for patents on an international basis Bachelors 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 Possess knowledge of IP law and practice, including current judicial decisions and administrative rule changes and implementations Experience with litigation support, including developing and implementing IP strategies, and conducting infringement investigations and initial analyses, desirable but not required Experience with agreements involving technology and intellectual property matters, including drafting intellectual property agreements or clauses when requested, desirable but not required This opening requires an individual with excellent analysis, evaluation, oral and written communications skills Seeking an attorney that is self-motivated, intuitive, with excellent organizational skills, who can plan and schedule their own activities, as well as work with a team to meet deadlines Pluses: Medical device or software experience is highly desirable.
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