Senior Patent Counsel

MESO SCALE DIAGNOSTICS, LLC. • Rockville, MD

6h

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
supervision of outside counsel for 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 7 years of experience in U.S. and foreign patent preparation and prosecution.
• Admittance to practice before the U.S. Patent and Trademark Office.
• An extensive record of accomplishment of successful patent drafting, filings, and prosecution.
• Expert 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, as well as lead projects and initiatives without close supervision.
• Demonstrated ability to counsel non-IP stakeholders, translate complex patent issues into business-relevant guidance, and influence decision-making at the leadership level.
• 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.

Nice To Haves

• Experience supervising outside and foreign patent counsel and providing docket oversight and budget management strongly preferred.

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.
• Supervises/reviews outside counsel work product on 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, providing recommendations to senior management regarding same, and supports enforcement of company patents.
• Provides advice and guidance to Associate General Counsel/General Counsel on IP-related 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

• In addition to competitive salaries, our benefits include medical, dental, and vision coverage, along with prescription benefits.
• We provide a 401(k) plan with company matching, flexible spending accounts, and company-paid short- and long-term disability insurance as well as group life and accidental death and dismemberment insurance.
• Our offerings also encompass paid vacation, paid sick leave, paid holidays, and paid parental leave, along with an employee assistance program.
• Additional voluntary perks include a fitness club membership contribution, pet insurance, identity theft protection, home and auto insurance discounts, and optional supplemental life insurance.

What This Job Offers

• Job Type: Full-time
• Career Level: Mid Level
• Number of Employees: 251-500 employees