Job Description

Patent Attorney
The candidate will actively participate in the process of creating a strong patent portfolio for the company. Will take responsibility for all phases of patent prosecution for the company’s global patent portfolio which includes full responsibility for an assigned docket of new and pending patent applications. Develop and implement effective patent strategies relating to the assigned docket of patent applications. Conduct invention disclosure interviews to identify new patentable ideas, reviewing technical functional specifications, publications, presentations and other written materials for the purpose of identifying inventions, monitoring and pro-actively obtaining missing materials that are required for the timely completion of invention disclosure forms, reviewing incoming invention disclosures, and conducting prior art searches. Strategically prepare and prosecute high quality patent applications for inventions generated within the company. Respond to US office actions, manage and provide instructions to outside foreign patent counsels for prosecution of foreign counterparts. Prepare continuation, continuation-in-part, divisional, re-issue, or re-exam applications in-house. Review and adapt patent applications drafted by external attorneys or patent agents to conform to best practices of the company, as required. Participate in the patent portfolio mining sessions for the purpose of categorizing and ranking the portfolio for potential use in the industry. Assist in patent licensing, acquisitions and litigation support as required.

The candidate should have a Bachelor's degree in electrical engineering from an accredited four-year college or university and a J.D. degree from an ABA accredited law school. Should be in good standing with at least one State Bar and registered to practice in front of the USPTO. Must have 2-3 years of related industry experience, preferably in product design in the areas of telecommunications, DRAM, Flash, microprocessor/microcontrollers or high-speed memory interfaces. Should also have 5 years of patent preparation and prosecution experience in a reputable law firm setting with focus on preparing and prosecuting US and foreign patent applications in the areas of telecommunications, DRAM, Flash, microprocessor/microcontrollers or high-speed memory interfaces. Experience in a large corporate environment as an Attorney is preferred.

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