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Location:
UK
Job type:
Permanent
Technical Advisor

Firm Summary

White & Case is an elite global law firm serving leading companies, financial institutions and governments worldwide. Our long history as an international firm means we are perfectly placed to help our clients resolve their most complex legal challenges wherever they may be.

With lawyers operating from more than 40 locations, working in virtually every country of the world, we have invested heavily in building a high-quality full-service practice competing at the top of the market. We are distinguished by our on-the-ground presence in the world’s key financial markets and our strengths in handling complex cross-border work.

It’s not just about our global network of offices; it’s the global interconnectedness of the Firm that our people, and our clients, value most. We work well together across geographic and practice boundaries. It’s one of the reasons we attract and retain cross-border work. And why we attract a diverse group of people.

Our lawyers are globally minded, enterprising, collaborative and committed to excellence. Diversity is a core value of our Firm and it has been recognized with numerous awards and top rankings around the world. Our people represent 90 nationalities and speak 80 languages.

Position Summary

Technical advisors are non-lawyers who work in the Global Intellectual Property Practice under the supervision of Intellectual Property attorneys in providing legal services to clients. Their responsibilities include assisting attorneys and IP senior legal assistants in the representation of clients involved in patent prosecution matters, contested patent proceedings, IP litigation and due diligence, and the responsibilities may vary depending upon the project to which they are assigned.

Our Practice Area

Many of the world’s leading pharmaceutical, internet and technology companies, including major multinational corporations, turn to us for their most important intellectual property needs. From bet-the-company litigation to ground-breaking, cross-border transactions, the intellectual property lawyers in our global network offer our clients decades of experience, combined with in-depth legal expertise across a broad spectrum of technology sectors.

As a technical advisor joining our practice, you will find yourself in a collegial working environment where partners are friendly and accessible and your colleagues always supportive and open to questions. A relatively non-hierarchical practice with a strong commitment to professional development, we believe in giving everyone a voice, and in giving team members significant responsibility at a relatively early stage of their careers.

The work can be demanding, but is always rewarding—both in terms of the satisfaction of contributing to your team’s success, and of supporting pioneering companies engaged in high-profile, high-stakes disputes that have a lasting impact on people’s lives.

Duties and Accountabilities1

Patent Prosecution and Counseling Responsibilities

1. Prepare, file and prosecute patent applications with the U.S. Patent and Trademark Office (“PTO”) and in foreign jurisdictions in a diverse range of technology areas (e.g. pharma, business methods, computer chips and hardware, medical and personal care devices, heating systems, satellites, laminates, polymers).
2. Analyze invention disclosures and develop global patent strategies.
3. Handle all prosecution and filing correspondence with clients and global patent offices and local agents, and respond to all patent office communications regarding patent applications. This includes counseling clients and preparing prosecution papers, and instructing local agents in relevant foreign countries. It also includes conducting examiner interviews and appearing in oral proceedings at patent offices, where necessary to represent the client’s interest in obtaining robust global patent protection.
4. Prepare analyses and submissions for contested patent proceedings, including petitions for Inter Partes Review and EPO oppositions. It may also include supporting IP litigation cases. Responsibilities would include preparing patentability analyses, including prior art assessments, and infringement and validity contentions. It may also include working with expert witnesses and developing declarations for use in infringement and validity disputes.
5. Assist in conducting IP clearance searches and freedom-to-operate analyses to support client product development efforts, licensing and acquisitions.

Qualifications

*
Knowledge of trade and legislative policy issues related to trade acquired through a combination of education and work experience.

*
Approximately four years on the job experience / post-secondary education needed to provide clients with policy advice.

*
Ability to organize and prioritize numerous tasks and complete them under time constraints.

*
Ability to proofread typed material for contextual, grammatical, typographical or spelling errors.

*
Interpersonal skills necessary in order to communicate in person, by e-mail and telephone and follow the instruction effectively from a diverse group of clients, attorneys and staff and provide information with ordinary courtesy and tact.

*
Work requires a high level of mental effort and strain while monitoring numerous policy issues and drafting reports and memoranda for clients.

*
Ability to contact complex research projects using human and document sources.

*
Work occasionally requires more than 40 hours per week to perform the essential duties of the position; may require irregular hours.

*
Ability to operate standard office equipment such as computer, photocopiers, fax machines, and typewriter.

*
Ability to travel to private and public buildings, locally and statewide, via private or public conveyance to assist attorney in attending to client needs on legal matters.

Location & Reporting

* This role may be based in Boston, New York, Washington D.C. or Silicon Valley.

The Firm may modify and amend any job description at any time in its sole discretion. Nothing herein creates a contract of employment or otherwise modifies the at-will nature of employment.

1The above is only a general description of the essential duties associated with this position. It is not an exhaustive or comprehensive list of all duties of the individual holding such position.

Primary Location
: United States-Boston

Other Locations
: United States-Washington D.C., United States-New York, United States-Silicon Valley

Job
: Competition

Job Posting
: Sep 24, 2020, 12:43:41 AM
Technical Advisor

Firm Summary

White & Case is an elite global law firm serving leading companies, financial institutions and governments worldwide. Our long history as an international firm means we are perfectly placed to help our clients resolve their most complex legal challenges wherever they may be.

With lawyers operating from more than 40 locations, working in virtually every country of the world, we have invested heavily in building a high-quality full-service practice competing at the top of the market. We are distinguished by our on-the-ground presence in the world’s key financial markets and our strengths in handling complex cross-border work.

It’s not just about our global network of offices; it’s the global interconnectedness of the Firm that our people, and our clients, value most. We work well together across geographic and practice boundaries. It’s one of the reasons we attract and retain cross-border work. And why we attract a diverse group of people.

Our lawyers are globally minded, enterprising, collaborative and committed to excellence. Diversity is a core value of our Firm and it has been recognized with numerous awards and top rankings around the world. Our people represent 90 nationalities and speak 80 languages.

Position Summary

Technical advisors are non-lawyers who work in the Global Intellectual Property Practice under the supervision of Intellectual Property attorneys in providing legal services to clients. Their responsibilities include assisting attorneys and IP senior legal assistants in the representation of clients involved in patent prosecution matters, contested patent proceedings, IP litigation and due diligence, and the responsibilities may vary depending upon the project to which they are assigned.

Our Practice Area

Many of the world’s leading pharmaceutical, internet and technology companies, including major multinational corporations, turn to us for their most important intellectual property needs. From bet-the-company litigation to ground-breaking, cross-border transactions, the intellectual property lawyers in our global network offer our clients decades of experience, combined with in-depth legal expertise across a broad spectrum of technology sectors.

As a technical advisor joining our practice, you will find yourself in a collegial working environment where partners are friendly and accessible and your colleagues always supportive and open to questions. A relatively non-hierarchical practice with a strong commitment to professional development, we believe in giving everyone a voice, and in giving team members significant responsibility at a relatively early stage of their careers.

The work can be demanding, but is always rewarding—both in terms of the satisfaction of contributing to your team’s success, and of supporting pioneering companies engaged in high-profile, high-stakes disputes that have a lasting impact on people’s lives.

Duties and Accountabilities1

Patent Prosecution and Counseling Responsibilities

1. Prepare, file and prosecute patent applications with the U.S. Patent and Trademark Office (“PTO”) and in foreign jurisdictions in a diverse range of technology areas (e.g. pharma, business methods, computer chips and hardware, medical and personal care devices, heating systems, satellites, laminates, polymers).
2. Analyze invention disclosures and develop global patent strategies.
3. Handle all prosecution and filing correspondence with clients and global patent offices and local agents, and respond to all patent office communications regarding patent applications. This includes counseling clients and preparing prosecution papers, and instructing local agents in relevant foreign countries. It also includes conducting examiner interviews and appearing in oral proceedings at patent offices, where necessary to represent the client’s interest in obtaining robust global patent protection.
4. Prepare analyses and submissions for contested patent proceedings, including petitions for Inter Partes Review and EPO oppositions. It may also include supporting IP litigation cases. Responsibilities would include preparing patentability analyses, including prior art assessments, and infringement and validity contentions. It may also include working with expert witnesses and developing declarations for use in infringement and validity disputes.
5. Assist in conducting IP clearance searches and freedom-to-operate analyses to support client product development efforts, licensing and acquisitions.

Qualifications

*
Knowledge of trade and legislative policy issues related to trade acquired through a combination of education and work experience.

*
Approximately four years on the job experience / post-secondary education needed to provide clients with policy advice.

*
Ability to organize and prioritize numerous tasks and complete them under time constraints.

*
Ability to proofread typed material for contextual, grammatical, typographical or spelling errors.

*
Interpersonal skills necessary in order to communicate in person, by e-mail and telephone and follow the instruction effectively from a diverse group of clients, attorneys and staff and provide information with ordinary courtesy and tact.

*
Work requires a high level of mental effort and strain while monitoring numerous policy issues and drafting reports and memoranda for clients.

*
Ability to contact complex research projects using human and document sources.

*
Work occasionally requires more than 40 hours per week to perform the essential duties of the position; may require irregular hours.

*
Ability to operate standard office equipment such as computer, photocopiers, fax machines, and typewriter.

*
Ability to travel to private and public buildings, locally and statewide, via private or public conveyance to assist attorney in attending to client needs on legal matters.

Location & Reporting

* This role may be based in Boston, New York, Washington D.C. or Silicon Valley.

The Firm may modify and amend any job description at any time in its sole discretion. Nothing herein creates a contract of employment or otherwise modifies the at-will nature of employment.

1The above is only a general description of the essential duties associated with this position. It is not an exhaustive or comprehensive list of all duties of the individual holding such position.

Primary Location
: United States-Boston

Other Locations
: United States-Washington D.C., United States-New York, United States-Silicon Valley

Job
: Competition

Job Posting
: Sep 24, 2020, 12:43:41 AM
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