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Patent Attorney Goleta United States,  

Posted on : 16 April 2017

Project Description

JOB SUMMARY: Brief description of what this person does, in simple direct terms. Under general guidance but limited direct supervision, will perform patent and trademark drafting and prosecution services, and will draft licenses related to intellectual property rights.  Provide direct oversight of the Karl Storz North America IP Staff.  ESSENTIAL FUNCTIONS: List the essential duties and responsibilities of the position, in order of importance and/or amount of time spent. Prepare, file, and prosecute to issuance provisional and non-provisional patent applications. Draft and review business contracts, including distribution, supply and manufacturing agreements, purchase agreements, licenses, non-disclosure agreements. Prepare intellectual property related legal opinions on issues such as freedom to operate, ownership, infringement, and validity. Perform patent related due diligence in commercial transactions such as mergers, acquisitions, divestitures, and licensing. Communicate effectively with business areas, such as R&D, marketing, and sales on patent and trademark matters. Draft, file and prosecute patent applications on behalf of company before the U.S. Patent and Trademark Office (USPTO); provide legal representation in cases of patent infringement and related litigation matters. Conduct searches of prior art to evaluate whether an invention has been previously represented in the public domain and is patentable. Review and draft contracts for the company (both general business related and intellectual property related) as assigned. Keep fully informed of all new and/or evolving developments in patent and trademark law and keep executive management informed of applicable new laws, their impact on the organization, and the progress and results of court cases and/or legal opinions. Develops operational policies and procedures for tracking, maintaining and updating legal documentation and records Selects, develops, and evaluates personnel to ensure the efficient operation of the function. Regular attendance is an essential job function. Will spend part of his/her time as a member of continuous improvement teams undertaking projects and seeking ways to improve the quality of KSI’s products and services. ADDITIONAL RESPONSIBILITES: List other important functions that are secondary duties but may be time consuming.   Investigate and analyze competing products for possible infringement of KS patents; reporting findings to Senior KS Executive Management and KST Patent Management. Manage coordination of relevant cross-company IP issues; providing feedback and recommendations to KS Executive Management and KST Patent Management, as appropriate. Monitor and analyze competitive patents, reporting and making recommendations to Senior KS Executive Management and KST Patent Management, as appropriate. Train and support key KS employees at various responsibility levels on patent search skills and techniques, and related patent claims interpretation, in and related to their particular specialty. Performs other related duties as assigned by supervisor. KNOWLEDGE, SKILLS, ABILITIES: What does a person in this position need to be able to do? Knowledge of state and federal laws governing intellectual property and patents. Knowledge of patent related case law from the U.S. Supreme Court, U.S. Court of Appeals for the Federal Circuit, and U.S. District Courts, and experience in analyzing the patentability of inventions and the validity of patents, and drafting related opinions and or other legal documents. Ability to read, analyze, and interpret the most complex documents.Ability to conduct complex and extensive research, write reports, legal briefs, business and legal correspondence. Ability to use patent and trademark tracking software in order to track deadlines. Knowledge of medical device quality system regulations and standards (eg, U.S. FDA Quality System Regulation 21CFR Part 820, ISO13485, ISO9001) EDUCATION AND EXPERIENCE:  What is the usual educational background and work experience of an individual qualified to perform this job?   BA/BS degree (or equivalent training and experience) in scientific or engineering disciplines J.D., member of CA or other State Bar; license to practice law in the state, required Minimum of five years patent prosecution experience; plus registration to practice before the U.S. Patent & Trademark Office. Experience reviewing and drafting contracts is preferred German language is a plus. INTERFACE:  (Internal/External Customers) List positions, work groups, departments. Detailed interaction with in-house and outside US and international patent practitioners/counsel, engineers, scientists, technical marketing specialists, and corresponding support staff. Interaction with global KS Executive Management at all levels, as required. Various employees at all responsibility levels within KS, and globally BENEFITS   Medical / Dental / Vision 3 weeks vacation plus sick days 401K plus company match Section 125 Flexible Spending Accounts Life, STD, LTD & LTC Insurance Tuition reimbursement (Up to $5,250 per year) About the Company: As the largest privately held medical device company in the world, KARL STORZ has achieved global preeminence in endoscopes and medical imaging devices used in minimally invasive surgery . KARL STORZ Imaging in Goleta, CA designs develops manufactures and services advanced video imaging systems and accessories. How to Apply: For immediate consideration, click on the below link which will take you directly to our website to complete an on-line application. Upon completion, you will receive an automated confirmation verifying your application has been received. KARL STORZ University and other training and development programs. Fitness reimbursement up to $200 annually And much more!  


Goleta, CA

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