Overview
Patent Counsel Jobs in Gaithersburg, MD at Talently
Title: Patent Counsel
Company: Talently
Location: Gaithersburg, MD
Job Title: Patent Counsel OR Senior Patent Counsel
Location: Remote (with some travel required)
Salary: $150,000-$265,000
Skills: Patent preparation/prosecution, Intellectual property law, Patent analysis, Patent drafting, Communication
About the Opportunity:
Join a dynamic organization in the biotechnology industry, where intellectual property innovation drives advancement in scientific and engineering breakthroughs. As Patent Counsel, you'll play a vital role in securing and protecting pioneering inventions, partnering closely with inventors and the Intellectual Property team. This position offers the opportunity to influence patent strategy and contribute to industry-leading technologies, with broad exposure to both domestic and international patent matters.
Responsibilities:
- Provide legal advice and opinions on patentability of inventions and validity of patents.
- Communicate with inventors and Intellectual Property team members to facilitate development of engineering-related inventions.
- Prepare and submit patent applications, navigating the patent application process globally.
- Assist with and supervise prosecution of domestic and international patent applications.
- Review patent materials and literature to determine the possibility of grants on inventions.
- Research potential infringement by competitors and support enforcement of company patents.
- Support negotiation of licenses, non-disclosure agreements, and other contracts involving patents.
- Stay current on patent law changes and participate in continuing education opportunities.
Must-Have Skills:
- Mechanical Engineering degree and experience.
- Juris Doctorate degree with an active license to practice before a state bar.
- Minimum of 3 years of experience in U.S. and foreign patent preparation and prosecution.
- Admittance to practice before the U.S. Patent and Trademark Office.
- Proficiency with patent searching tools and databases.
- Strong critical thinking, analytical, and communication skills.
Nice-to-Have Skills:
- Experience supervising outside and foreign patent counsel, providing docket oversight and budget management.
- Ability to counsel non-IP stakeholders and influence leadership decision-making.
- Business acumen, negotiation, and mediation skills.
- Experience developing patent strategies and conducting due diligence and licensing transactions.
