Sr Intellectual Property Counsel

Share Share 13633BR Sr Intellectual Property Counsel Aliso Viejo, California, USA 200-Legal $147,532.07-$184,415.09 (Financial compensation packages may be higher/lower than listed, & will ultimately depend on factors including relevant experience, internal equity, skillset, knowledge, geography, education, business needs and market demand) Job Description Create and manage a first-in-class patent portfolio; conduct IP landscaping studies to help drive IP strategy and to support product development; identify and document new patentable product ideas, and occasionally draft patent applications. Responsible for monitoring the patent prosecution docket and working closely with outside counsel to guide the prosecution of existing cases. 1. Manage invention disclosures, work with internal teams (e.g., R D, Engineering, etc.) to harvest and strategically vet invention disclosures for patent filings 2. Work with outside counsel to strategically prosecute patent applications to maximize portfolio's value 3. Manage outside patent counsel to ensure quality and timely work product 4. Conduct strategic IP due diligence, including analyzing the patent portfolios of the Company's competitors and potential collaborators 5. Help implement systems and processes to scale IP programs 6. Conduct freedom-to-operate and invalidity studies and provide detailed legal analysis on infringement and invalidity 7. Create and analyze IP landscapes for targeted market sectors and/or entities 8. Draft and negotiate license agreements and IP clauses in other agreements 9. Provide IP (e.g., patent, trade secret, etc.) training to internal personnel 10. Provide IP litigation support 11. Strategically prosecute and mine portfolio to support licensing initiative 12. Conduct training sessions on the patent process, best practices for maintaining confidential business information, and the overall development of intellectual property assets 13. Comply with applicable Laws and Regulations, adhere to Quality Management System processes and requirements as well as demonstrate Ethics and Integrity in all matters and at all levels throughout the organization 14. Perform additional duties as assigned Qualifications 1. Bachelor of Science degree or higher in one of the following: mechanical engineering, biomedical engineering, electrical engineering, chemical engineering, computer engineering, software engineering, mathematics, material science, or physics 2. JD from an accredited law school 3. Member of the USPTO Patent Bar 4. A minimum of eight (8) years of experience as an attorney performing patent preparation and global prosecution in a law firm 5. Excellent written and verbal communication skills 6. Proficient with MS Word, Excel, Outlook, and Teams Desired Qualifications 1. Medical device, pharmaceutical, or other healthcare-related experience 2. IP litigation experience 3. Member of the California State Bar 4. Patent prosecution experience in polymer and mechanical devices 5. Additional patent prosecution experience in corporate setting EEO We are an equal employment opportunity employer. All qualified applicants will receive consideration for employment without regard to race, national origin, gender, age, religion, disability, sexual orientation, veteran status, marital status or any other characteristics protected by law. Fair Chance Ordinance If you are applying to perform work for Terumo Neuro in any position which will involve performing at least two (2) hours of work on average each week within the unincorporated areas of Los Angeles County, you can find here a list of all material job duties of the specific job position which Terumo Neuro reasonably believes that criminal history may have a direct, adverse and negative relationship potentially resulting in the withdrawal of a conditional offer of employment. Terumo Neuro will consider for employment qualified job applicants with arrest or conviction records in accordance with the California Fair Chance Act, Los Angeles County Fair Chance Ordinance for Employers, Fair Chance Initiative for Hiring Ordinance, and San Francisco Fair Chance Ordinance. Posting Country US - United States Sr Intellectual Property Counsel | MicroVention Apply to job Save Send to friend