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General Counsel
Consulting
provided
exceptional
service in helping
my organization
recruit for a hard
to fill position.
They did extensive
work on the front
end to understand
our needs and
our culture and
began referring
highly qualified
candidates almost
immediately.

Melinda Burrows
Deputy General Counsel
- Litigation and
Compliance, Progress
Energy Service Company
LLC

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Counsel Jobs > Patent Counsel II Job in New York > Patent Counsel II

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New York - Patent Counsel II

Refer job# OFHY25405

Patent Counsel II The candidate will review and evaluate technical developments of the company and prepare, file and prosecute US and foreign patent applications covering the patentable aspects of such developments with the objective of obtaining an exclusive position in a technical area for a limited number of years. Will review and evaluate marketing and technical activities of others, counsel management regarding possible infringement by such parties of company patents, and assist outside counsel in any patent litigation against such parties. Review and evaluate marketing and technical activities of the company, counsel management so as to avoid infringement on patent rights of others, and assist outside counsel in defending against any patent charges brought by others against the company. Review advertising, product labels, packaging, product data sheets and the like relating to company products, as well as proposed company publications or publications company employees or consultants, to ensure that company rights in proprietary technical information and patents are properly protected and encroachment on the rights of others is avoided. Prepare, negotiate, and interpret agreements relating to licensing and/or assignment of US and foreign patents or other industrial property rights to and/or from the company in order to obtain use of technology of others, allow the company to operate with minimal restrictions in its desired areas, and/or provide royalty income to the company for the use by others of company technology. Prepare, negotiate, and interpret agreements relating to consultantships, grants, technical disclosures to the company, and the proprietary rights aspects of employer-employee relations in order to obtain the assistance of the company without jeopardizing company rights or incurring unreasonable liabilities. Will report either directly to the Vice President, Patent and Licensing, Chemical Businesses or to an Associate Patent Counsel. The candidate should have a Bachelor's degree in an engineering related discipline, such as electrical engineering, physics, software, chemical engineering or electrochemistry. Must be trained in the general practice of law and hold the degree of J.D. or its equivalent. Should be capable of and be fully licensed to handle all phases of the general practice of law in at least one state, preferably the state in which working. Must have 8+ years of broad experience in the patent law field and a thorough knowledge of both the US and the foreign laws relating thereto. Should also be registered to practice before the USPTO. Must be well-versed in those aspects of the antitrust laws which relate to intellectual property in order to insure that drafting license agreements. Familiarity with recent court decisions relating to patents, licenses, antitrust, secrets, and unfair competition is also necessary. Should have the ability to analyze and recognize the significance of complex developments in several technological areas, such as chemistry, pharmacology and instrumentation. Skill in drafting and prosecuting patent applications and in drafting and negotiating licenses and other agreements relating to intellectual property rights is also required. In depth electrical engineering background with experience in electro chemistry, antilogarithms, patent prep and process, patent contract negotiations and diagnostics experience preferred.

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