Senior Patent Counsel - Int'l Healthcare Company
Consultant Hillary Crowder
Date posted October 18, 20187 Times Square New York NY 10036 Robert Walters United States of America
Searching for a Senior Patent Counsel to be located in Northern California. This position will report to one of the company's Associate Patent Counsel and primarily provide support across the business sectors, in conjunction with the company's initiative in Health and Technology.
• Provide a full range of patent support functions, including patent preparation and prosecution freedom-to-operate studies (e.g., infringement and validity analysis), and particularly, client counseling.
• Strong emphasis on drafting and negotiating license and research collaboration agreements
• Strong emphasis on providing due diligence support for business development activities
• Support US and OUS litigation
• Manage outside counsel
• Make regular presentations and interact with the business about patents, other intellectual property, contracts, and due diligence matters
• Provide training to business personnel on patents, intellectual property, and contractual matters
• An undergraduate or advanced degree in Applied Mathematics, Computer Science or Computer Engineering, Electrical Engineering, or Systems Engineering is required.
• A Juris Doctorate from an accredited law school and admission to practice before the USPTO and licensed to practice in at least one state are required
• A minimum of six (6) years of law firm or corporate law department experience is required
• Patent preparation and prosecution experience is preferred
• Experience in the rendering of patentability and non-infringement opinions is required
• Experience in due diligence activities, license/agreement drafting and negotiation is required
• A demonstrated competency in the computer or electromechanical arts and combination technology systems (e.g., systems including software, chemistry, biologic or materials component) is required.
• Experience dealing with big data and data analytics is preferred
• The ability to articulate and positively engage clients and internal partners is required
• Travel up to 20% both domestically and internationally is required