Patent & Trademark Counsel

• In coordination with General Counsel, oversee and manage the companys trademark and patent portfolios, including being responsible for clearance reviews, application of registrations, and providing timely responses or taking actions necessary to maintain registration as well as provide advice and recommendations to managers and/or business executives regarding trademark and patent issues, and report these and other matters listed below regularly to the General Counsel and Executives.
• Become thoroughly and completely familiar with and versed in Streamlights product offerings and the patents and trademarks that apply to each product, including an in-depth understanding of the companys business and industry model as well as extensive knowledge of the product line and supporting technology.
• Engage in effective communications with the appropriate stakeholders to ascertain what patents and trademarks need to be filed.
• Create programs to maximize the efficiency of the engineering and new product development departments and enhance communication channels therewith.
• Review and approve any relevant outside IP bills for payment.
• Review and negotiate agreements between the company and its outside counsel, sales reps, distributors, and other business partners, and/or service providers, including non-disclosure agreements, professional services agreements, licensing agreements, etc.
• Participate in special projects and legal research as needed.
• All other activities as assigned.

• B.S., M.S., or Ph.D. degree in mechanical or electrical arts preferred.
• J.D. from ABA accredited law school, preferably one with a reputation for a strong patent and IP program offering.
• Member in good standing of the Patent Bar and the Bar of the Commonwealth of Pennsylvania bar or willingness to sit for PA Bar exam.
• 2-5 years law firm and/or in-house professional patent and trademark prosecution experience or the equivalent experience as a patent examiner in mechanical and electrical engineering
• Experience in Business operations ideal but not required.
• Thorough knowledge of patent concepts and procedures in mechanical and electrical arts.
• Ability to understand complex technical details of inventions in order to draft and prosecute patent applications effectively.
• Demonstrable design and electrical patent drafting and prosecution experience from invention disclosure to claims and specification drafting.
• Analyze office actions and prepare responses thereto, including the ability to conduct interviews with the Patent or Trademark Examiner, if needed.
• Understanding of the elements of patent and trademark litigation, including patent validity/invalidity and infringement/non-infringement assessments.
• Comprehensive knowledge of US and Foreign patent and trademark practice and procedure
• Proficiency in trademark, copyright and trade secret law and practice and ability to implement relevant programs supporting same
• Trademark prosecution experience or willingness to obtain same in order to manage entire trademark portfolio.
• Experience with U.S. and international trademark clearance, prosecution and enforcement as well as experience with the Trademark Trial and Appeal Board
• Understanding of how trademarks and trademark law intersect with the companys branding, advertising, marketing and promotional matters.
• Experience with or at least familiarity with the Uniform Domain-Name Dispute-Resolution Policy (UDRP) and resolution of trademark-based domain-name disputes
• Familiarity with patent docketing systems and patent portfolio management systems
• Outstanding interpersonal skills and the ability to communicate with executive staff, engineering staff and other internal departments as well as outside counsel as necessary.

Note Goinhouse.com as the source of your application when applying.