IP Attorney

1 month ago

Austin, United States OSTEOCENTRIC TECHNOLOGIES INC Full time
Job DescriptionJob Description

The OsteoCentric Technologies, Inc. IP Attorney will play a critical role in managing and protecting the intellectual property of UnifiMI technology. Reporting directly to the Chief Technology Officer, the IP Attorney will be responsible for the preparation, prosecution, and strategic management of patents and trademarks, ensuring alignment with OsteoCentric Technologies, Inc.’s R&D initiatives and business goals. Additionally, this role involves supporting licensing deals and intellectual property transactions.


  • Patent Preparation and Prosecution:
    • Draft, file, and prosecute patent applications related to medical devices in the US and internationally.
    • Conduct prior art searches and analyze the patentability of inventions.
    • Prepare and file responses to office actions and other communications from patent offices.
    • Coordinate with foreign associates to manage international patent prosecution.


  • Trademark Protection
    • Manage trademark matters as needed, including registrations and monitoring.


  • Licensing and Transactions:
    • Support the negotiation and execution of IP licensing deals and other transactions.
    • Draft and review licensing agreements and related documents.
    • Conduct due diligence for potential licensing opportunities and partnerships.

  • Collaboration with R&D:
    • Engage with R&D teams to understand and document technical aspects of new inventions.
    • Provide strategic advice on patent portfolio management and development.
    • Attend R&D meetings to identify patentable innovations early in the development process.
    • Train R&D staff in partner companies on patents, such as searching, interpreting, and writing disclosures.

  • Strategic IP Counseling:
    • Advise the organization on intellectual property matters.
    • Conduct patentability and freedom-to-operate analyses.
    • Clearly communicate complex legal and technical concepts to non-legal stakeholders.

  • Litigation Support:
    • Assist with patent litigation and enforcement as required.

  • IP Strategy and Development:
    • Collaborate with R&D and business development teams to create IP strategies that support business goals.
    • Monitor industry trends and competitor activities to inform strategic IP decisions.

  • Marketing Collateral Review
    • Review all relevant product marketing and packaging materials for accurate copyright protections, trademark usage, and patent markings as applicable.

  • Compliance and Documentation:
    • Ensure adherence to relevant laws, regulations, and ethical standards.
    • Maintain accurate records of all patent-related activities.


Requirements:

  • Juris Doctor (JD) degree from an accredited law school
  • Admission to at least one state bar; admission to patent bar (USPTO) is required
  • At least 5 years of experience relevant to this role, experience in healthcare and/or medical device preferred
  • Bachelor’s or advanced degree in biomedical engineering, mechanical engineering, or a related field
  • Experience drafting and negotiating various types of license agreements and other agreements, including technology license agreements
  • Experience in patent litigation
  • Proficiency in patent research tools and software

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