The Patent Developer (Patent Lawyer) supports an IP Incubator as an embedded client resource. This attorney role will provide full lifecycle patent advice and support client innovation efforts through active participation in the creative process.
• Develop a SMART patent portfolio throughout the lifecycle of each IP asset by owning the process from invention harvesting to final renewal/abandonment decision.
• Develop a deep understanding of the client business and provide value-added services, including but not limited to, Competitive Landscape Analysis (CLA) and patentability counseling.
• Lead and mentor assigned patent agents/engineers to improve quality of invention disclosures and to identify/develop uncaptured or underdeveloped high-value/breakthrough inventions.
• Manage outside counsel preparation and prosecution of patent applications focusing on asset quality and cost control.
• Actively participate in post allowance review process to ensure maximum asset value
• Identify licensing and other monetization opportunities.
• Identify and investigate infringement by others.
• Provide subject matter expertise in the evaluation of threats and/or in-bound licensing requests
• Support IP transactions, including but not limited to, Joint Development Agreements, M&A, Joint Ventures, Asset Transfer Agreements
• Support development of global IP strategy.
• Provide IP counseling to clients in support of business efforts and initiatives.
• BS in Engineering or Computer Science; MA, PhD or other advanced degree a plus
• JD and active licensure in good standing before the bar of at least one US jurisdiction
• Registered to practice before the USPTO
• 3-5 years patent preparation and prosecution at a law firm or in-house
• Strong written and verbal communication skills and the ability to clearly, thoroughly and succinctly communicate complex ideas
• Proactive and consultative approach with strong ability to effectively prioritize multiple competing work requirements
• Ability to rapidly learn new skills
• Experience with global filings a strong plus (particularly EPO, Germany, China)
• Prior patent litigation experience a plus
UnitedLex is the leading enterprise legal services provider that drives digital transformation throughout the corporate legal ecosystem. UnitedLex was founded in 2006 with a singular mission to improve the performance of leading corporations, law firms, and academic institutions. Since then, more than 2,700 attorneys, engineers, and consultants across four continents have deployed innovative solutions that deliver unparalleled business impact resulting in risk mitigation, efficiency improvements, and cost optimization for clients around the world.
As a fast-growing company, we are committed to hiring talented individuals, providing a great workplace culture, continuously developing our employees, and providing interesting, challenging, and innovative work. Our global platform is the perfect place for hard-working, forward-thinking professionals from all walks of life to nurture and grow careers.
Expires on - 06/06/2019