Senior Patent Counsel in Alameda, CA

$150K - $200K(Ladders Estimates)

Penumbra   •  

Alameda, CA 94501

Industry: Pharmaceuticals & Biotech


5 - 7 years

Posted 61 days ago

This job is no longer available.

What You'll Achieve

  • Manage prosecution of pending patent applications; prepare and prosecute patent applications for new inventions.
  • Work with engineers on the R&D team to capture invention disclosures.
  • Review third party patents for impact on existing and new products as well as relevance to patent applications.
  • Conduct intellectual property due diligence prior to potential acquisitions and contractual relationships.
  • Manage outside counsel and maintain strong working relationship with USPTO.
  • Oversee protection of trademarks and copyrights.
  • Review and revise intellectual property protection and disclosure practices.
  • Assist in resolution of intellectual property disputes and litigation.
  • Negotiate and document intellectual property licensing arrangements.
  • Provide pragmatic, business-oriented advice on the retention or acquisition of intellectual property rights.
  • Communicative effectively, both in writing and verbally, with other departments and senior management to convey intellectual property strategy.

What You Bring

  • J.D. and membership the California Bar or at least one other state's bar and the ability to obtain registered in-house counsel status.
  • Admission to practice before USPTO.
  • Six plus years of relevant legal experience.
  • Undergraduate degree in mechanical or biomedical engineering preferred.
  • Ability to process a high volume of work and meet deadlines in a fast-paced environment.
  • Experience with medical devices strongly preferred, ideally with those used in vascular and endovascular procedures.
  • Software engineering or computer science background a plus.
  • Demonstrated managerial and interpersonal skills with a "can-do" attitude.

Valid Through: 2019-9-13