Patent Counsel

Patent Counsel at Talently Patent Counsel at Talently in Gaithersburg, Maryland Posted in 4 days ago.

Type:

full-time

Job Description:

Job Title:

Patent Counsel OR Senior Patent Counsel Location:

Remote (with some travel required)

Salary:

$150,000-$265,000

Skills:

Patent preparation/prosecution, Intellectual property law, Patent analysis, Patent drafting, Communication About the

Opportunity:

Join a dynamic organization in the biotechnology industry, where intellectual property innovation drives advancement in scientific and engineering breakthroughs. As Patent Counsel, you'll play a vital role in securing and protecting pioneering inventions, partnering closely with inventors and the Intellectual Property team. This position offers the opportunity to influence patent strategy and contribute to industry-leading technologies, with broad exposure to both domestic and international patent matters.

Responsibilities:

Provide legal advice and opinions on patentability of inventions and validity of patents. Communicate with inventors and Intellectual Property team members to facilitate development of engineering-related inventions. Prepare and submit patent applications, navigating the patent application process globally. Assist with and supervise prosecution of domestic and international patent applications. Review patent materials and literature to determine the possibility of grants on inventions. Research potential infringement by competitors and support enforcement of company patents. Support negotiation of licenses, non-disclosure agreements, and other contracts involving patents. Stay current on patent law changes and participate in continuing education opportunities.

Must-Have Skills:

Mechanical Engineering degree and experience. Juris Doctorate degree with an active license to practice before a state bar. Minimum of 3 years of experience in U.S. and foreign patent preparation and prosecution. Admittance to practice before the U.S. Patent and Trademark Office. Proficiency with patent searching tools and databases. Strong critical thinking, analytical, and communication skills.

Nice-to-Have Skills:

Experience supervising outside and foreign patent counsel, providing docket oversight and budget management. Ability to counsel non-IP stakeholders and influence leadership decision-making. Business acumen, negotiation, and mediation skills. Experience developing patent strategies and conducting due diligence and licensing transactions.