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Contract Attorney / Intellectual Property Attorney in Dallas, TX

Toyota Motor Sales, U.S.A., Inc. Sep 14,2016 May 06,2016 Location Dallas TX
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In-House

Attorney

Corporate - Contract Law

Intellectual Property

Litigation - Whistleblower - CFTC

Min 5 yrs required

Profile

Managing Counsel – Patent/Contract Responsibilities: Actively handle intellectual property issues for Toyota’s North America operations, including invention submission, domestic and foreign patent filing, domestic and foreign patent prosecution, third party patent clearance and strategic patent counseling. Draft, negotiate and implement sponsored research agreements, joint development agreements, nondisclosure agreements, material transfer agreements and related research and development services agreements. Coordinate with Japanese parent company and global affiliates on patent strategy, filing, prosecution, and patent management issues. Counseling, strategy, management, and development of policies, processes, and template materials relating to North America patent and contract activity. Provide counsel and guidance to research and technical staff on the conduct of research internally and with collaborative partners. Train research and technical staff on contract compliance, best practices in research transactions and key aspects of intellectual property creation and protection. Effectively use and manage outside counsel/vendor resources to help support desired results. Identify issues outside of core practice area and collaborate with other legal and business groups including business transactions and litigation to achieve best in class legal representation for the company. Support legal department initiatives, including new legal technology programs and outside counsel partnering programs. Participate in legal and business trade and industry association activities to support the company’s intellectual property interests. Handle special projects and other matters, as assigned.

Qualification and Experience

Qualifications: A JD Degree from an ABA-accredited law school. Admission to active practice in a U.S. state Bar and ability to obtain immediate authorization to practice in Texas as registered in-house counsel; also must be able to obtain license to practice in Texas. Registered to practice before the United States Patent and Trademark Office. Experience practicing in a major law firm or a combination of experience in a major law firm and a corporate law department, handling all aspects of patent practice. Extensive experience and expertise in the following areas: Facilitating the creation, protection and maintenance of intellectual property. Negotiation of collaborative research agreements, including corporate sponsored research with research universities and US federal government national laboratories. Negotiation of standard nondisclosure agreements, joint development agreements and related research and development agreements. Understanding of the legislative and regulatory framework for research collaborations in the US. Ability to work closely with research scientists and technical staff to facilitate research objectives. Ability to obtain a license to practice in Texas. Strong analytical, organizational and process-development skills. Strong sense of inclusion and teamwork. Preferred: Significant experience with Technology/Product Development. Ability to review, revise and assist with the implementation of corporate policies regarding intellectual property and the handling of confidential information. Experience in the development of training programs which educate research and technical staff and promote compliance with corporate policies and contractual obligations. Experience in developing relationships with university sponsored research programs and technology transfer offices. Understanding of the basic function and funding structure of US Department of Energy national laboratories and related entities. Experience working with clients located outside of the United States and/or experience working in a multinational company. Broad, generalist knowledge of complementary areas of the law such as trademark, copyright, and trade secret.

Additional info

Ref-TMN00002

Company info