What are the responsibilities and job description for the Patent Attorney position at KARL STORZ ENDOSCOPY?
Job Summary
We are looking for a Patent Attorney to join our Global Legal/IP Team! In this position, you will perform patent and trademark drafting and prosecution services, draft licenses related to intellectual property rights and provide direct oversight of the Karl Storz North America IP Staff. Ideally this position will be based our of our KARL STORZ Imaging (KSI) location in Goleta, CA with a hybrid remote work schedule that allows flexibility for 3 days remote/2 days in the office. In order for this role to be 100% remote, candidates must meet all criteria and travel to the office when needed.
Responsibilities
- Prepare, file, and prosecute to issuance provisional and non-provisional patent applications.
- Draft and review business contracts, including distribution, supply and manufacturing agreements, purchase agreements, licenses, non-disclosure agreements.
- Prepare intellectual property related legal opinions on issues such as freedom to operate, ownership, infringement, and validity.
- Perform patent related due diligence in commercial transactions such as mergers, acquisitions, divestitures, and licensing.
- Communicate effectively with business areas, such as R&D, marketing, and sales on patent and trademark matters.
- Provide legal representation in cases of patent infringement and related litigation matters
- Conduct searches of prior art to evaluate whether an invention has been previously represented in the public domain and is patentable.
- Review and draft contracts for the company (both general business related and intellectual property related) as assigned.
- Keep fully informed of all new and/or evolving developments in patent and trademark law and keep executive management informed of applicable new laws, their impact on the organization, and the progress and results of court cases and/or legal opinions.
- Develops operational policies and procedures for tracking, maintaining and updating legal documentation and records.
- Selects, develops, and evaluates personnel to ensure the efficient operation of the function.
- Regular attendance is an essential job function
- Will spend part of his/her time as a member of continuous improvement teams undertaking projects and seeking ways to improve the quality of KSI’s products and services.
- Special projects as required.
Qualifications
- In-house experience preferred as either counsel or as part of project teams
- Knowledge of state and federal laws governing intellectual property and patents.
- Knowledge of patent related case law from the U.S. Supreme Court, U.S. Court of Appeals for the Federal Circuit, and U.S. District Courts, and experience in analyzing the patentability of inventions and the validity of patents, and drafting related opinions and or other legal documents.
- Ability to read, analyze, and interpret the most complex documents. Ability to conduct complex and extensive research, write reports, legal briefs, business and legal correspondence.
- Ability to use patent and trademark tracking software in order to track deadlines.
- Knowledge of medical device quality system regulations and standards (i.e., U.S. FDA Quality System Regulation 21CFR Part 820, ISO13485, ISO9001)
- J.D., member of a State Bar in good standing, required
- Registration to practice before US Patent & Trademark Office, required
- BA/BS degree (or equivalent training and experience) in scientific or engineering disciplines, preferably related to imaging systems, machine learning and image recognition, and/or graphics/video processing
- Minimum of five years patent prosecution experience
- Experience reviewing and drafting contracts is preferred
- German language is a plus but not required
About the Company
Located just north of Santa Barbara on the scenic Central Coast of California, KARL STORZ Imaging in Goleta designs and manufactures high tech medical imaging equipment including video cameras and image enhancing devices. We employ technical staff with expertise in electronics, optics, mechanical systems and software. Our lean manufacturing operations include an in-house machine shop which enables the complete on-site assembly of our products. To become a part of this dynamic team, we invite you to learn more about our opportunities.
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