The Legal team is responsible for managing the legal affairs of the company, including providing legal counsel across the organization, handling disputes, and creating and enforcing intellectual property. The Corporate Communications team manages our internal and external communications with key stakeholders including investors and financial analysts, global media, and our employees around the world.
Let's talk about the team and you:
The Patent Counsel will work closely with relevant ResMed businesses to cultivate and grow a business aligned patent portfolio, with particular focus on ResMed’s software-as-a-service and digital health innovations. The Patent Counsel will have responsibility in all stages of the patent process, including, idea capture, drafting, filing, and prosecuting applications to issue. Additionally, the Patent Counsel will assist in assessing competitive patent portfolios, evaluating freedom-to-operate, supporting IP aspects of due diligence and integration associated with acquisitions/partnerships, and supporting IP licensing efforts.
Let’s talk about Responsibilities:
- Capturing and/or compiling new ideas from various sources within the company to drive new patent filings.
- Drafting patent applications in their entirety.
- Responding to PTO office actions and all other communications, including developing and presenting arguments and amendments as needed.
- Filing patent application, office actions, forms and any other necessary documents directly with the USPTO.
- Creating reports, charts, summaries, or other useful tools for facilitating communication and collaboration with various business partners within the company.
- Patent freedom-to-operate assessment
- Competitive patent portfolio analysis
- Assisting with IP due diligence in support of acquisitions and partnerships
Let’s talk about Qualifications and Experience:
- Bachelors Degree in related field; will be considered dependent on experience.
- Admitted to state bar and registration to practice before the US Patent and Trademark Office.
- Minimum 4 years of experience as a patent practitioner in a law firm or corporate setting
- Must have experience drafting and prosecuting software related patents
- Understanding of Software-as-a-Service (SaaS), cloud computing and services, internet-of things, and machine learning
- Familiarity with major open source software licenses
- In-house legal experience at a software company
- Bachelors in Electrical Engineering, Computer Science, or Computer Engineering strongly preferred