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Patent Counsel

Req ID:  866

Working Location: WASHINGTON, REDMOND 

 

Are you looking for a company that cares about people’s lives and health, including yours? At Olympus, we help make people’s lives healthier, safer and more fulfilling, every day. 
 
Let’s inspire healthier lives, together.

Job Description

The Patent Counsel  maintains responsibility for  all aspects of U.S. and foreign prosecution for U.S. based Olympus entities in the medical field, including drafting applications and responding to Office Actions from the United States Patent and Trademark Office in coordination with outside patent counsel. He/ she will be the primary interface with engineers and technical staff regarding new patent filings. The incumbent will conduct competitive landscape searches and review prior art with R&D staff at regular meetings. He/ she maintains responsibility for the prosecution process from invention disclosure to the issued patent. He/ she manages IP docketing and database in coordination with support staff. He/ she conducts patent clearance studies and patentability searches. He/ she will assist with training programs for engineers on topics such as patent searching. He/ she will coordinate with the IP Liaison to Tokyo on prosecution issues that impact global business objectives. He/ she assist the Patent Manager in developing and executing portfolio management strategy. The incumbent maintains responsibility for other litigation, licensing, acquisition or partnership due diligence as necessary. He/ she handle intellectual property matters arising from the daily business operation of Olympus Surgical Technologies Americas (the Corporation) medical and surgical product groups, including negotiating and drafting contracts on behalf of the Corporation on a variety of intellectual property matters. 

The Assistant General Counsel I provides professional counsel and service to the medical and surgical product groups of other companies of the Olympus Group in intellectual property matters. 

Job Duties

* Manage all aspects of US prosecution including drafting applications and responses to Office Actions.
 

* Manage intake of Patent clearance study requests and conduct search for Freedom to Operate.
 

* Manage intake of invention disclosures and review disclosures for patentability.
 

* Coordinate prosecution matters with outside counsel.
 

* Instruct foreign patent associates on foreign filings and office actions.
 

* Conduct infringement and invalidity studies in support of litigation.
 

* Manage docket and database management. 
 

* Train engineers on patent issues.
 

* Participate in M&A team for due diligence and freedom to operate for acquisitions or licenses.
 

* Create patent landscapes and design guidance documents.
 

* Drafting and negotiating various intellectual property related agreements, including licenses and transactional documents.
 

* Preparing and revising patent clearance studies.
 

* Providing counsel on patent infringement and patent clearance opinions.
 

* Assisting in the management of the Corporation’s worldwide intellectual property portfolio.
 

* Supervising and providing guidance to outside counsel when retained to assist with the foregoing responsibilities.
 

* Works with research and development and marketing personnel, as well as patent agents and senior management, to define and implement intellectual property strategy for the Corporation. 
 

* Performs other related duties as directed.

Job Requirements

REQUIRED QUALIFICATIONS:

* Minimum Bachelors of Science and preferably Master’s of Science degree in an Electrical Engineering, Mechanical Engineering or medical device design field.

 

*Juris doctor degree from an accredited law school
 

* Member of at least one State bar

 

* Minimum 3+ years of experience in patent prosecution or 5 years combined engineering and patent experience.

 

PREFERRED QUALIFICATIONS:

 

* Law firm experience preferred.

 

* Experience in patent prosecution for mechanical and electrical devices preferred.

 

* Knowledge of energy devices, surgical devices, software or optical technology a plus.
 

* Engineering industry experience preferred.
 

* Registered to practice before the U.S. Patent and Trademark Office.
 

* Candidate would need to be willing to travel up to 20% of their time to support other locations.#Must be able to communicate effectively (verbal and written) and be proficient in Microsoft Office (Word, Excel or Access, PowerPoint). 
 

* Ability to work in small team environment, but also self starter with ability to work independently.
 

* Must be able to meet deadlines and be detailed orientated. Good planning and organization skills a must. 
 

* Strong critical thinking and problem solving skills.
 

* High energy, self motivated, hands on and participatory with  strong results orientation and ability to quickly establish priorities.
 

* Must have a sense of ownership and a desire to support the organization to achieve high level corporate goals.
 

* Strong relationship skills.
 

* High level of motivation, commitment and dedication combined with a proactive mindset.

We realize work isn’t just a job to you.

It’s a big part of your life, but not the only part. That’s why we offer competitive salaries, a robust 401(k) program, annual bonus program and comprehensive medical benefits, as well as tuition reimbursement, flexible schedules, parental and adoption leave, on-site services and Colleague Affinity Networks — so you can be ready for where life can take you.

Olympus is passionate about the solutions it creates for the medical, life sciences, and industrial equipment industries, as well as cameras and audio products. For more than 100 years, Olympus has focused on making people’s lives healthier, safer and more fulfilling by helping detect, prevent, and treat disease, furthering scientific research, ensuring public safety, and capturing images of the world.

Olympus Corporation of the Americas, a wholly owned subsidiary of Olympus Corporation, is headquartered in Center Valley, Pennsylvania, USA, and employs more than 5,500 employees throughout locations in North and South America. For more information, visit www.olympusamerica.com.
 

Olympus…True to You. True to Society. True to LIFE.

It is the policy of Olympus to extend equal employment and advancement opportunity to all applicants and employees without regard to race, color, national origin (including language use restrictions), citizenship status, religious creed (including dress and grooming practices), age, sex (including pregnancy, childbirth, breastfeeding, medical conditions related to pregnancy, childbirth and/or breastfeeding), gender, gender identity and expression, sexual orientation, marital status, disability (physical or mental) and/or a medical condition, genetic information, ancestry, veteran status or service in the uniformed services, and any other characteristic protected by applicable federal, state or local law.

Posting Notes: || United States (US) || Washington (US-WA) || Redmond || 

 

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Nearest Major Market: Seattle
Nearest Secondary Market: Bellevue

Job Segment: Engineer, Electrical, Drafting, Database, Mechanical Engineer, Engineering, Technology

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