29 days old

Patent Attorney

Company Confidential
Carlsbad, California 92008
  • Job Type
    Corporate Counsel
  • Job Status
    Full Time

The TaylorMade Patent Counsel position is responsible for managing all ball patent filings and ball prosecution, supporting litigation, and supporting clearance of new TaylorMade products.

Essential Functions and key responsibilities:

  • Ensures timely patent creation and filing in light of the accelerated filing requirements imposed by America Invents Act of September 16, 2011 and its first to file requirements for patents filed after March 16, 2013.
  • Works closely with TaylorMade’s R&D teams to research inventions by proactively coordinating meetings with management and scientists to discuss potential patent filings.
  • Aggressively researches patentability of ideas created by the R&D teams pertaining to TaylorMade product development.
  • Strategically file patents to cover competitive landscape and new TaylorMade products.
  • Update inventions and patent applications on a regular basis.
  • Manage and update ball patent marking website and maintain fast and efficient marking program.
  • Manage all ball utility and design patent filings and prosecution.
  • Manage outside law firms in the prosecution of patent applications.
  • Support outside law firms in the litigation of patents.
  • Provide litigation and licensing support.
  • Draft or revise joint development agreements, general licensing agreements, supplier agreements, NDAs, patent and trademark license agreements, and court briefs.
  • Negotiate and draft cross-license agreements with direct competitors to eliminate design constraints.
  • Support general practice corporate attorneys in various contract drafting and negotiations.
  • Performs other responsibilities as required

Knowledge and Skills Requirements

  • Excellent verbal and written English communication skills 
  • Excellent skills in technical and legal writing
  • Acts with speed and urgency to draft and prosecute patent applications in a timely fashion with minimum turnaround time.
  • Ability to handle a broad range of chemistry/chemical related patent/research activities.
  • Demonstrated strong strategic and analytical thinking.
  • Experience with global patent prosecution, patent appeals, re-examination, re-issue, inter partes reviews proceedings, and litigation is a plus.
  • Exemplifies highest ethical standards.
  • Ability to work across teams and manage multiple priorities to accomplish multiple tasks
  • Proficient in Microsoft Suite (Word, Excel, Outlook, PowerPoint)
  • Proficient in patent filing
  •  Knowledge of and interest in golf preferred.

Requirements

Education, Work Experience and Professional Certifications:

  • BS in Chemistry or Chemical Engineering.
  • JD from accredited Law School.
  • Member in good standing of a State Bar, or eligible to practice as a California registered in-house attorney.
  • USPTO registration number required
  • 1+ years’ experience as a patent agent/attorney specializing in drafting patents in the chemical arts.

Work Environment / Physical Requirements

  • Normal office conditions with extensive computer usage
  • Ability to work extended hours as necessary
  • Occasional travel required
  • Able to work efficiently and accurately in an atmosphere of frequent interruption.
  • Light physical effort equal to frequent lifting or moving of lightweight materials

 

Categories

Posted: 2021-11-02 Expires: 2021-12-02

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Patent Attorney

Company Confidential
Carlsbad, California 92008

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