Patent Attorney

Position Description

We are looking for a Patent Attorney to join our Global Legal/IP Team!  In this position, you will perform patent and trademark drafting and prosecution services, draft licenses related to intellectual property rights and provide direct oversight of the Karl Storz North America IP Staff.  Ideally this position will be based out of our KARL STORZ Imaging (KSI) location in Goleta, CA with a hybrid remote work schedule that allows flexibility for 3 days remote/2 days in the office.  In order for this role to be 100% remote, candidates must meet all criteria and travel to the office when needed.  You could also be based our of any of our hub office locations: El Segundo, CA, Stafford, TX or Charlton, MA.

Responsibilities

• Prepare, file, and prosecute to issuance provisional and non-provisional patent applications.
• Draft and review business contracts, including distribution, supply and manufacturing agreements, purchase agreements, licenses, non-disclosure agreements.
• Prepare intellectual property related legal opinions on issues such as freedom to operate, ownership, infringement, and validity.
• Perform patent related due diligence in commercial transactions such as mergers, acquisitions, divestitures, and licensing.
• Communicate effectively with business areas, such as R&D, marketing, and sales on patent and trademark matters.
• Provide legal representation in cases of patent infringement and related litigation matters
• Conduct searches of prior art to evaluate whether an invention has been previously represented in the public domain and is patentable.
• Review and draft contracts for the company (both general business related and intellectual property related) as assigned.
• Keep fully informed of all new and/or evolving developments in patent and trademark law and keep executive management informed of applicable new laws, their impact on the organization, and the progress and results of court cases and/or legal opinions.
• Develops operational policies and procedures for tracking, maintaining and updating legal documentation and records.
• Selects, develops, and evaluates personnel to ensure the efficient operation of the function.
• Regular attendance is an essential job function
• Will spend part of his/her time as a member of continuous improvement teams undertaking projects and seeking ways to improve the quality of KSI’s products and services.
• Special projects as required.

Qualifications

• In-house experience preferred as either counsel or as part of project teams
• Knowledge of state and federal laws governing intellectual property and patents.
• Knowledge of patent related case law from the U.S. Supreme Court, U.S. Court of Appeals for the Federal Circuit, and U.S. District Courts, and experience in analyzing the patentability of inventions and the validity of patents, and drafting related opinions and or other legal documents.
• Ability to read, analyze, and interpret the most complex documents.  Ability to conduct complex and extensive research, write reports, legal briefs, business and legal correspondence.
• Ability to use patent and trademark tracking software in order to track deadlines.
• Knowledge of medical device quality system regulations and standards (i.e., U.S. FDA Quality System Regulation 21CFR Part 820, ISO13485, ISO9001)
• J.D., member of a State Bar in good standing, required
• Registration to practice before US Patent & Trademark Office, required
• BA/BS degree (or equivalent training and experience) in scientific or engineering disciplines, preferably related to imaging systems, machine learning and image recognition, and/or graphics/video processing
• Minimum of five years patent prosecution experience
• Experience reviewing and drafting contracts is preferred
• German language is a plus but not required

About the Organization

KARL STORZ SE & Co. KG based in Tuttlingen, Germany, is a family-owned, global company committed to benefiting humanity by advancing medical technology through innovation and education.

KARL STORZ has been a leading provider of advanced endoscopy systems and related medical technology for more than 75 years.  We’re all about long-term, sustainable development—and that goes for both our products and our people. Our family-oriented culture gives you the tools you need to thrive at work and the time you need to recharge at home.

You’ll get to bring your authentic self to work every day and advance your career with a company that shares your goals—another reason why so many people on our team have stayed with us for so long.

Join KARL STORZ and experience a more enriching career, one where the work you do supports our goal to put best-in-class medical technology into the hands of skilled surgeons to save patient lives every day.

How to Apply

Please apply at the link below.

Apply Here