• Provide a full spectrum of intellectual property legal services including client counseling, IP transactions including technology development and licensing contracts, patent protection, surveillance, enforcement, licensing, and litigation.
• Conduct patent novelty, validity and right to market studies and patent and information searches using internal and external resources and vendors, analyzing and summarizing search results.
• Draft and file patent applications and liaison with inventors for the information needed to prepare and file patent applications; conduct such drafting and liaison activities.
• Draft and file foreign and PCT patent applications and liaison with inventors and foreign counsel for the information needed to prepare and file patent applications; handle such filing and liaison activities.
• Attend to ongoing patent prosecution, including preparing responses to Office Actions received from patent offices, foreign and domestic.
• Transaction services include IP agreements such as license agreements, secrecy agreements, joint development agreements, and consulting agreements, as well as intellectual property advice in regard to M&A negotiations and other transactions.
• Must possess a technical degree, preferably in Chemistry or Chemical Engineering or a related field.
• Must possess a law degree (with excellent academic credentials), be registered with the USPTO, and be a member of the Bar in good standing. Willing to consider outstanding candidates admitted to the Bar in any state.
• 3-7 years of patent legal experience in a diverse intellectual property practice (law firm or in-house), including patent drafting and prosecution, non-infringement opinions, and freedom to operate opinions.
• Familiarity with films and adhesives, or products that are based on related chemistries is a plus.
• Experience with other intellectual property (IP) such as trademark and copyright is useful.
• Must have strong communication and interpersonal skills.
• A working knowledge of PCT and European patent practice is desirable.
• Experience drafting patents (patent prosecution).
• Transactional experience (licensing, JDA, partnering agreements, negotiation experience with universities) is a plus.
• Litigation experience is a plus.
• Approximately 25% travel should be expected.
Apply by visiting this link: https://www.averydennison.apply2jobs.com/index.cfm?fuseaction=mExternal.showJob&RID=8190&sid=63.
Employer Type: Large Corporation
Job Location: Mentor, Ohio