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Patent IP Attorney

CyberCoders

Patent IP AttorneyPosition OverviewWe are seeking an experienced Patent IP Attorney to manage and advance a high-value patent portfolio across US and international jurisdictions. The role is responsible for drafting and prosecuting patent applications, conducting freedom-to-operate and patentability analyses, managing oppositions and appeals, advising on licensing, transactions, and M&A, supporting IP litigation and expert witness activities, and coordinating cross-border prosecution and regulatory interplay. The ideal candidate combines strong technical background, excellent claim drafting and analytical skills, hands-on experience with patent search and docketing tools, and proven USPTO and EPO practice experience.Key ResponsibilitiesDraft, edit and prosecute patent applications and claims for software, electrical/mechanical, biotech/pharma, chemistry and related technologies, including PCT and national phase filingsPrepare and file PCT, US and foreign patent applications; manage prosecution strategy and correspondence with foreign associatesConduct prior art searches, patentability analyses, freedom-to-operate (FTO) studies, invalidity/validity opinions, and infringement analysesPrepare persuasive responses to office actions, appeals, oppositions (including EPO oppositions), and reexamination proceedingsManage and advise on patent portfolio strategy, prosecution budgets, annuity and fee management, patent term adjustment and maintenanceSupport licensing, technology transfer, IP due diligence for M&A, and commercialization activities including drafting and negotiating IP-related agreements (NDAs, licenses, assignment agreements)Provide IP litigation support, coordinate with outside counsel, assist with claim construction, expert witness retention and preparationQualificationsJuris Doctor (JD) or equivalent law degree and technical degree (e.g., MS, PhD, or engineering degree) in relevant discipline (electrical, mechanical, computer science, biotechnology, chemistry)Registration to practice before the USPTO; admission to a state bar required; European Patent Attorney qualification or EPO practice experience preferredStrong litigation support experience including infringement analysis, claim construction, expert witness coordination and managing outside counselExcellent written and oral communication skills, strong attention to detail, project and docket management skills, and ability to work with cross-functional teamsFamiliarity with standards/SEP issues, software and computer-implemented inventions, biotechnology/pharmaceutical drafting, chemistry patents, and regulatory considerations (e.g., FDA) preferredAbility to travel as needed and to coordinate international prosecution and litigation activitiesBenefitsVacation/PTOMedicalDentalVision401kBonusRelocationTelecommute

Vacancy posted 1 day ago
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