Senior Patent Counsel (BIO)

MESO SCALE DIAGNOSTICS, LLC.•Rockville, MD

2d•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 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

Advanced degree in molecular biology or related field (PhD preferred)
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.
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.

Nice To Haves

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