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IP Counsel / Patent Agent - Small Corporation - Germantown, Md. or Morris County, N.J.

By Dennis Crouch

Smiths Detection is seeking an IP Counsel / Patent agent to perform the following essential functions: manage global filing and prosecution of patent and trademark applications; identify and assist in pursuing strategies and actions for global patent and trademark protection; perform freedom to operate, infringement, and validity analyses; assist with licensing and other IP-related transactions.

Responsibilities:
? Manage patent and trademark prosecution
? Design and conduct freedom to operate searches and manage outside law and search firms, as appropriate
? Perform infringement analyses and/or manage outside counsel review of third party patents
? Survey competitor patent portfolios
? Work with R&D to prepare invention disclosures, determine patentability, and determine protection strategy
? Manage trademark clearances and assist with trademark filings and renewals
? Assist businesses with annuity payment decisions
? Maintain IP asset database
? Comply with all applicable U.S. export control and security regulations
? Comply with and ensure department compliance with Company health, safety and environmental policies
? Other duties as required

Requirements:
Education/Training: Minimum of Bachelor of Science in physics, Electrical Engineering, or Mechanical Engineering. Advanced degree preferred.  Experience with spectroscopic and radiographic methods a plus. Must be registered to practice before United States Patent and Trademark Office.

Experience: 3+ years demonstrated experience in patent law. Former USPTO examiner or law firm experience is highly desirable. Experience should include drafting and prosecuting domestic and international patent applications, conducting freedom to operate and patentability analyses. Experience with trademark clearance and prosecution is desirable. Prior experience with intellectual asset management databases also is desirable. Transactional and litigation experience desirable, but not required.

Knowledge/Skills: The right person will have excellent communication skills, both written and interpersonal, to communicate clearly and effectively with the Legal & Compliance group and the R&D function. Must have excellent working knowledge of global patent prosecution. Experience with freedom to operate clearances required. Experience with trademark clearance and prosecution desirable. Must be capable of working closely with the R&D function to process new invention disclosures and perform freedom to operate analyses. Knowledge of IP asset database software desirable.

Supervises: None.

Physical/Mental Requirements:
? Excellent written, verbal and interpersonal skills; capable of interacting with co-workers, senior management, outside counsel, third parties and other external contacts
? Strong organizational and project management skills
? Ability to pursue projects to completion with a minimum of input or direction, take initiative in creating and improving work processes, and work effectively on a variety of simultaneously active with fluctuating priorities and deadlines
? Excellent attention to detail
? Exercises some discretion and independent judgment regarding matters within specialty area

Contact:
Interested applicants should contact Christine Labat, Recruiting Manager, at: christine.labat@smithsdetection.com .

Additional Info:
Employer Type: Small Corporation
Job Location: Germantown, Maryland or Morris County, New Jersey

Full post as published by Patent Law Jobs by Patently-O on February 16, 2010 (boomark / email).