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Senior Patent Counsel

Key Facts

Category:  Counsel
Full time
Expert & Leadership (>10 years)
English

Other Skills

  • •
    Wireless Communications
  • •
    Verbal Communication Skills
  • •
    Writing
  • •
    Teamwork
  • •
    Editing

Roles & Responsibilities

  • At least 5 years of PTAB experience (drafting petitions, filing, litigating, deposition) or relevant ex parte reexamination experience
  • State Bar admission and passage of the Patent Registration Examination
  • Ability to work independently and in a team
  • Excellent English written and oral communication skills

Requirements:

  • Manage patent office proceedings internally, including drafting petitions, filing, and litigating ex parte reexaminations and other post-grant procedures (IPR, PGR, CBM)
  • Draft, file, and litigate patent office proceedings; handle communications with decision makers; draft motions and briefs; assist with amicus curiae drafting and support
  • Support senior attorneys in ongoing matters, including docketing, e-filing, deposit accounts, budgeting, and editing the work product of colleagues and outside counsel
  • Provide contract, licensing, and other legal support services, including diverse legal writing and related duties

Job description

Unified Patents is again growing its legal department, and seeks to add an experienced, registered patent attorney. Applicants should have at least 5 years of law firm or other relevant experience before the U.S. Patent and Trademark Office (USPTO), in particular working on ex parte reexamination proceedings, post-grant petitions (IPR, PGR, and CBM), or other administrative drafting and litigation experience.

Applicants should have a strong technical background and be willing to explore diverse new technologies; experience with video codecs, coding, cryptography, compression, signals, wireless communications, or other algorithmic subject matter is a plus. Patent examination experience is a plus; clerking experience is a plus; familiarity with ongoing appellate issues affecting PTAB practice is a plus. Must be willing to work within a team, work well independently, and enjoy writing and editing. Preference for candidates located in the Washington, DC area; remote officing is possible. Diversity is prized in our team and among our candidates. Please be prepared to discuss the administrative matters you have been involved in and be ready to provide examples.

Duties

Managing patent office proceedings internally

Drafting, filing, and litigating patent office proceedings, e.g., ex parte reexaminations

Handling calls with decision makers

Drafting motions and briefs

Supporting senior attorneys with management of ongoing matters

Support docketing, e-filing, deposit account, budgeting, and other IP functions

Editing work product of colleagues, outside counsel

Amicus curiae drafting and support; comment drafting and support

Contract, licensing, and other legal support services

Legal writing, support, and other various legal duties

Requirements

5 years of PTAB (drafting petitions, filing, litigating, deposition) or relevant reexamination experience

State Bar and Patent Registration Examination passage

Ability to work independently and in a team

Excellent English written and oral communication skills

Preferred additional qualities 

Patent Office examination experience

Algorithmic, codec, and other code-based subject matter experience

Semiconductor, analog and integrated circuit, and fabrication experience

Appellate and/or clerking experience

EE or CS undergraduate degree

Graduate Technical (MS, MA, or PhD) degree

Willing to work from DC preferred

Benefits

Aggressive, competitive benefits, with generous vacation and paid-for health insurance and profit-sharing; freedom to work from home when appropriate; maternity and paternity leave; financial support for bar associations and continuing legal education.

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