Patent Counsel

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Patent Counsel
Responsible: Conduct IP legal aspects of company’s intellectual property assigned to the candidate. Assist with identification and assessment of Patentable Inventions. The IP group at company interacts on a daily basis with company and other university personnel to identify potentially patentable subject matter. Patentability and Freedom-to Operate Analyses: These projects include evaluation of internal and third party matters, assessment of new technologies, and evaluation of proposed collaborations. Familiarity with database searching, both sequence and word-based, is desired. Prepare Provisional, Utility and International patent applications; design filing and prosecution strategies for assigned matters. Patent application writing will be a significant part of the responsibility of this position. Design filing and prosecution strategies for assigned matters; conduct domestic patent prosecution; convey instructions for prosecution to foreign and domestic outside patent counsel; review and revise drafts of submissions from outside patent counsel, and ensure proper coordination and execution of the overall patent prosecution strategy. May review invoices from law firms to determine accuracy and appropriateness and approves invoices for payment. Patent prosecution will be a significant part of the responsibility of this position. The candidate will provide patent preparation, prosecution and relevant IP legal services that are directly related and chargeable to technology cases. Assist in the management of relevant internal patent-related database(s), such as docketing and invention management systems. Provide Guidance and Counseling to Internal company Clients regarding patents, patentability and directly related issues. Advise company and others in the company environment, on the intellectual property considerations of proposed business endeavors handled by company. Identification of IP Issues Relevant to company. Monitoring relevant legislative judicial and administrative decisions that present issues relevant to IP at company. Input is required in the periodic company meetings where key legal, business and other matters are addressed.

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