Represent clients in numerous aspects of intellectual property (“IP”) matters, including patent prosecution, opinion preparation, and patent litigation. Manage very large international patent portfolios covering inventions in the life sciences field, with particular emphasis on agrochemicals. Prepare and prosecute patent applications relating to new chemical compounds and formulations. Prepare claim amendments and responses to notices and office actions issued by the United States Patent and Trademark Office (USPTO). Provide strategic counseling to clients on patent matters relating to product development. Communicate with clients and develop patent strategies that are consistent with clients’ business goals. Implement coherent patent strategies worldwide, including collaborating with foreign counsel to prepare and prosecute foreign patent applications and respond to office actions from foreign patent offices. Perform prior art searches and prepare patentability opinions regarding inventions relating to chemical compounds and formulations. Perform patent searches and prepare freedom to operate opinions regarding products relating to chemical compounds and formulations. Represent clients in disputes involving patent infringement. Conduct discovery of evidence. Perform legal research. Prepare legal documents including complaints, motions, and briefs for filing with courts. Prepare agreements, letters, and other documentation relating to intellectual property law. Communicate clearly and effectively with clients, foreign counsels, patent offices and courts on scientific and legal concepts. Develop and manage relationships across the firm and serve as relationship manager with key clients. Participate in strategic planning. Supervise and provide training and guidance to associates and paralegals and ensure that performance goals are set and met. Assist in the hiring process and help to train new attorneys. Support the organization's strategic alliances and partnership. Create and manage budget. Telecommuting permitted from greater NY area; must be willing to be in office for client and firm meetings as required. Must have a JD and be admitted in good standing with the New York State bar. Must have seven (7) years of experience as a U.S. patent attorney. Must have seven (7) years of experience managing international patent portfolios covering inventions relating to chemical compounds and formulations, including preparing and prosecuting U.S. and foreign patent applications. Must have five (5) years of experience working with clients in the agrochemical industry; and providing patentability opinions and freedom to operate opinions. Must have three (3) years of experience in litigation involving patent infringement, including experience with conducting discovery, performing legal research and preparing legal documents for filing with courts; and managing junior associates and/or legal staff. $192,795 - $225,000 / year To apply, send resume to eruiz@ARELAW.com. Must reference job 31848.02 [Note new job link; job reposted]
Posted
Updated
Position
Partner
Practice Areas
Intellectual Property
Specialties
Patent Prosecution, Patent Litigation, Litigation, Life Sciences