Position Overview

Manage the creation of high-quality patents to build a first-in-class patent portfolio; support product development by assisting engineers in designing around problematic patents; identify and document new patentable product ideas; and occasionally draft patent applications. Responsible for monitoring patent prosecution docket and working closely with outside counsel to guide prosecution of existing cases. Job duties:
  • Manage invention disclosures, work with internal teams (e.g., R&D, Engineering) to harvest and strategically vet invention disclosures for patent filings.
  • Work with outside counsel to strategically prosecute patent applications to maximize portfolio’s value.
  • Manage outside patent counsel to ensure quality and timely work product.
  • Help implement systems and processes to scale IP programs.
  • Conduct freedom-to-operate and invalidity studies and provide detailed legal analysis on infringement and invalidity.
  • Create and analyze IP landscapes for targeted market sectors and/or entities.
  • Provide IP (e.g., patent, trade secret) training to internal personnel.
  • Provide IP litigation support.
  • Strategically prosecute and mine portfolio to support licensing initiative.
  • Provide legal support and counsel as needed for reviewing/negotiating/drafting IP clauses in contracts for various agreement types (e.g., vendors, product sales, services, NDA, SRA).
  • Perform additional duties as assigned.
    1. JD from an accredited law school.
    2. Member of California State Bar and member of Federal Patent Bar.
    3. Must have a minimum of five (5) years of experience as an attorney performing patent preparation and prosecution in a relevant law firm or corporate setting.
    Desired Qualifications
    1. Strong verbal and written communication skills.
    2. Medical device, pharmaceutical, or other healthcare-related experience.
    3. Advanced degree in engineering, physics, biomedical, chemical engineering, or material science.
    4. IP litigation experience.