Job Information
Robert Half IP Counsel in San Francisco, California
Description
Growing biotech company based in San Francisco, CA has an immediate opening for a part-time IP Counsel! The legal team is looking for hire a skilled and experienced IP Counsel specializing in patent prosecution on a part-time contract basis. The ideal candidate will have expertise in both US and foreign prosecution activities, including strategy development for the portfolio, claim drafting, application drafting, office action responses, and conducting freedom to operate and patentability searches. This position requires close collaboration with outside counsel, with the ability to manage their activities effectively while also being capable of independently executing key tasks. This position is 100% remote, so candidates from across the US are encouraged to apply, and can offer about 20 hours per week with a flexible work schedule. Attorneys with 5+ years of domestic and foreign patent prosecution experience are encouraged to apply today!
Responsibilities:
Develop and implement patent prosecution strategies in alignment with the company's goals and objectives.
Draft and prosecute patent applications for inventions in the biotech field, ensuring strong and defensible patent claims.
Respond to office actions from patent offices worldwide, including the USPTO, EPO, and others, with thorough and persuasive arguments.
Conduct comprehensive freedom to operate (FTO) searches to assess potential risks and opportunities for new products and technologies.
Perform patentability searches and analyses to evaluate the novelty and inventiveness of new inventions.
Collaborate closely with outside counsel, providing guidance and oversight on prosecution activities to ensure alignment with company objectives.
Manage the workflow and priorities of outside counsel, effectively delegating tasks and monitoring progress to ensure timely and high-quality deliverables.
Provide strategic advice on patent matters, including portfolio development, licensing opportunities, and potential litigation risks.
Requirements
Qualifications:
Juris Doctor (JD) degree from an accredited law school, with preference for those with a Bachelors degree in Biology or related.
Admission to the Bar in any US jurisdiction.
Minimum of 5 years of experience in patent prosecution, with a focus on biotechnology preferred.
Proven track record of drafting and prosecuting patent applications, with a strong understanding of relevant technologies and scientific principles.
Experience managing outside counsel and effectively delegating tasks to achieve strategic objectives.
Proficiency in conducting FTO and patentability searches using various databases and tools.
Excellent written and verbal communication skills, with the ability to articulate complex legal concepts clearly and persuasively.
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