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Job Description
The Legal team is responsible for managing the legal affairs of the company, including providing legal counsel across the organization, handling disputes, and creating and enforcing intellectual property.
The Patent Counsel will work closely with relevant ResMed businesses to cultivate and grow a business aligned patent portfolio, with particular focus on ResMed’s Sleep and Respiratory care Devices (mechanical and electro-mechanical) and digital health innovations. The Patent Counsel will have responsibility in all stages of the patent process, including, idea capture, drafting, filing, and prosecuting applications to issue.
Additionally, the Patent Counsel will assist in assessing competitive patent portfolios, evaluating freedom-to-operate, supporting IP aspects of due diligence and integration associated with acquisitions/partnerships, and supporting IP licensing efforts.
Job Description
Let's talk about Responsibilities:
Required
The Patent Counsel will work closely with relevant ResMed businesses to cultivate and grow a business aligned patent portfolio, with particular focus on ResMed’s Sleep and Respiratory care Devices (mechanical and electro-mechanical) and digital health innovations. The Patent Counsel will have responsibility in all stages of the patent process, including, idea capture, drafting, filing, and prosecuting applications to issue.
Additionally, the Patent Counsel will assist in assessing competitive patent portfolios, evaluating freedom-to-operate, supporting IP aspects of due diligence and integration associated with acquisitions/partnerships, and supporting IP licensing efforts.
Job Description
Let's talk about Responsibilities:
- Capturing and/or compiling new ideas from various sources within the company to drive new patent filings.
- Drafting patent applications in their entirety.
- Responding to PTO office actions and all other communications, including developing and presenting arguments and amendments as needed.
- Filing patent application, office actions, forms and any other necessary documents directly with the USPTO.
- Creating reports, charts, summaries, or other useful tools for facilitating communication and collaboration with various business partners within the company.
- Patent freedom-to-operate assessment
- Competitive patent portfolio analysis
- Assisting with IP due diligence in support of acquisitions and partnerships
Required
- B.S. in Electrical Engineering, Computer Science, or Computer Engineering strongly preferred; B.S. in other related fields will be considered depending on experience.
- Admitted to state bar and registration to practice before the US Patent and Trademark Office.
- Preferably have 5+ years of experience as a patent practitioner in a law firm or corporate setting
- Must have experience drafting and prosecuting software related patents
- Understanding of Software-as-a-Service (SaaS), cloud computing and services, internet-of things