Patent Counsel

MSD Careers•Rockville, MD

4d•Onsite

About The Position

This position is responsible for providing the review, support, and drafting of patent applications for the company’s scientific- and engineer-related inventions. Principal responsibilities will include, but not be limited to, the preparation and prosecution of domestic and foreign patent applications with a focus on the mechanical arts. This position may also handle other legal matters, such as trade secret law.

Requirements

Bachelor’s degree in mechanical engineering or related field strongly desired.
Juris Doctorate degree with an active license to practice before a state bar.
A 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.
A track record of successful patent drafting, filings, and prosecution.
Knowledgeable on technical, scientific and legal aspects of intellectual property.
Ability to draft and prosecute patent assets, develop patent strategies and conduct associated patent analysis, due diligence, transactions and licensing.
Proficiency with patent searching tools and databases.
Demonstrated critical thinking and analytical skills, as well as the ability to handle complex situations and demonstrate sound judgment and problem solving.
Excellent communication skills with the ability to organize, present, and articulate ideas both verbally and in writing.
Strong business acumen, negotiation and mediation skills, as well as a demonstrated attention to detail and a focus on achieving quality outcomes.
Ability to build/foster relationships.
Ability to work independently and as part of a team.
Ability to handle information of a confidential nature and ensure that such information is secured and maintained in an appropriate manner.
Attention to detail with a demonstrated commitment to excellence and performance improvement and the drive to deliver quality and value-added results and outcomes.
Ability to travel locally.

Responsibilities

Provides legal advice and opinions on patentability of inventions and validity of patents.
Communicates with company inventors and members of the Intellectual Property team to understand and facilitate the development of engineering-related inventions.
Prepares and submits applications for patents and navigates the patent application process worldwide.
Assists with the prosecution of domestic and international patent applications.
Reviews patent material and literature to determine the possibility of grants on inventions.
Researches potential of infringement by competitors’ products and supports enforcement of company patents.
Provides support for the negotiation of licenses, non-disclosure agreements, and other contracts involving patents.
Stays current on changes in patent law and participates in continuing education opportunities.
Specific duties will vary depending upon departmental requirements.

Benefits

medical
dental
vision coverage
prescription benefits
401(k) plan with company matching
flexible spending accounts
company-paid short- and long-term disability insurance as well as group life and accidental death and dismemberment insurance
paid vacation
paid sick leave
paid holidays
paid parental leave
employee assistance program
fitness club membership contribution
pet insurance
identity theft protection
home and auto insurance discounts
optional supplemental life insurance