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Patent Attorney

Job Type: Full time
Company/Firm: Auctis Worldwide
Location: White Plains, NY
Date posted: 10/15/10
Salary: Salary dependent on experience
Job Description:
One of our prestigious clients in pharmaceutical/biotechnology industryhas multiple positions available forPatent Attorneys to develop and maintain comprehensive global patent portfolios, and handle global filing and prosecution of patent applications.

Major Responsibilities:

* Draft and prosecute patent applications. Prepare and file patent applications and substantive responses and oversee procedural actions.

* Provide client counseling. Advise on complex research collaborations, validity, infringements, freedom to operate, patentability opinions, keeping a close working relationship with the research and marketing arms of the Company.

* Facilitate information flow on IP (Intellectual Property) issues with internal and outside counsel and collaborators.

* Identify/draft high quality patent applications for new inventions.

* Manage US and foreign patents (if originated in the US).

* Evaluate patent disclosures, opinions and infringement studies.

* Evaluate the technology to determine feasibility.

*Review publication proposals, marketing materials, labels, packaging, data sheets and the like to ensure the Company's rights in proprietary information and IP are properly protected, and violation of the rights of others is avoided.


* This individual must be trained in the general practice of law and hold the degree of Doctor of Jurisprudence or its equivalent.

* Must have (4) four or more years of patent experience with (7) seven plus years of overall legal experience.
* He/she must be capable of and be fully licensed to handle all phases of the general practice of law in at least one state.

* He/she must also be registered to practice before the U.S. Patent and Trademark Office.

* This position requires broad experience in the patent law field and knowledge of both the U.S. and the foreign laws relating thereto.

* Must be well-versed in those aspects of the antitrust laws which relate to intellectual property.

* Be familiar with recent court decisions relating to patents, licenses, antitrust, secrets, and unfair competition is also necessary.

* Must have the ability to analyze and recognize the significance of complex developments in several technological areas, such as chemistry, pharmacology and instrumentation.

* Must be skilled in drafting and prosecuting patent applications and in drafting and negotiating licenses and other agreements relating to intellectual property rights is also required. He/she must have the ability to work independently and to communicate and deal with technical and nontechnical people as well as to express themselves incisively both orally and in writing.

Necessary Experience: 7+ to 10 Years
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