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Patent Prosecution Attorney in Mahwah, NJ at Lucas Group

Date Posted: 6/21/2018

Job Snapshot

  • Employee Type:
    Full-Time
  • Location:
    Mahwah, NJ
  • Job Type:
    Legal
  • Experience:
    At least 5 year(s)
  • Date Posted:
    6/21/2018

Job Description

Our client, an international medical device manufacturer is seeking to add an experienced Patent Prosecutor to their growing team



Experience Requirements:

  • Bachelor’s degree in a Science or Engineering discipline required
  • Five plus years of experience, preferably with a law firm
  • Successful candidate must be registered to practice before the U.S. Patent & Trademark Office
  • If currently a patent attorney, must be admitted to at least one state bar and be in good standing
  • Experience in intellectual property litigation is a plus, including experience investigating infringement by third parties, assisting in the preparation of cease and desist letters, and interfacing with outside counsel
  • Must be registered before the US Patent and Trademark Office and have a minimum of 5 years of experience prosecuting patents and coordinating non-U.S. prosecution and patent portfolio administration
  • Must have experience in analyzing the patentability of inventions and validity of patents, including the preparation of patent applications, opinions, and the filing of U.S. patent applications
  • Must not be de-barred by FDA for work in any Medical Device or Pharmaceutical business


Responsibilities:

  • Patent prosecution, including the preparation, filing, and prosecution of new patent applications
  • Supporting legal team in the preparation of intellectual property related legal opinions on issues such as freedom to operate, ownership, infringement, and validity
  • Supporting patent related due diligence in commercial transactions such as acquisitions, divestitures, and licensing
  • Preparing and participating in patent review panels to ensure IP and business strategy alignment
  • Possesses / willing to develop working knowledge of IP docketing system to independently docket and manage critical actions and associated dates
  • Support certain administrative needs of the department including, for instance, processing legal invoices, matter management, and assisting with needs the legal department may require
  • A working familiarity with global patent practices


Experience Requirements:

  • Bachelor’s degree in a Science or Engineering discipline required
  • Five plus years of experience, preferably with a law firm
  • Successful candidate must be registered to practice before the U.S. Patent & Trademark Office
  • If currently a patent attorney, must be admitted to at least one state bar and be in good standing
  • Experience in intellectual property litigation is a plus, including experience investigating infringement by third parties, assisting in the preparation of cease and desist letters, and interfacing with outside counsel
  • Must be registered before the US Patent and Trademark Office and have a minimum of 5 years of experience prosecuting patents and coordinating non-U.S. prosecution and patent portfolio administration
  • Must have experience in analyzing the patentability of inventions and validity of patents, including the preparation of patent applications, opinions, and the filing of U.S. patent applications
  • Must not be de-barred by FDA for work in any Medical Device or Pharmaceutical business


Responsibilities:

  • Patent prosecution, including the preparation, filing, and prosecution of new patent applications
  • Supporting legal team in the preparation of intellectual property related legal opinions on issues such as freedom to operate, ownership, infringement, and validity
  • Supporting patent related due diligence in commercial transactions such as acquisitions, divestitures, and licensing
  • Preparing and participating in patent review panels to ensure IP and business strategy alignment
  • Possesses / willing to develop working knowledge of IP docketing system to independently docket and manage critical actions and associated dates
  • Support certain administrative needs of the department including, for instance, processing legal invoices, matter management, and assisting with needs the legal department may require
  • A working familiarity with global patent practices


Date Posted: May 21, 2018

Valid until June 20, 2018

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