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Carrot Peelers, Sales, Personality and Your Job Search
In-House
Attorney
Intellectual Property
Litigation
Litigation - Whistleblower - CFTC
Min 5 yrs required
Counsel The candidate will be responsible for advising the company concerning complex legal issues related to business activities. Acts as a company advocate and advisor with respect to legal matters in one or more substantive areas of law. Interprets the intent of laws and judicial decisions and applies them to specific circumstances as applicable to company business. Communicates with vendors, customers and internal clients of the company and manages outside counsel with assistance with supervising attorney. Assists with the development of personnel and integration of company processes. Adheres to a strict code of ethics. Manage Intellectual Property (IP - patents, trade secrets, and copyrights) for a Fortune 500 energy services and technology company, as part of a sophisticated in-house legal team. Company is based in the U.S. but has operations worldwide. Responsible for providing legal advice to clients on a wide range of IP matters, including: engaging and managing outside counsel, managing patent prosecution docket, providing guidance on internal IP development, including managing brainstorming sessions and advising on foreign protection activities, managing and advising internal clients regarding freedom to operate studies for new product development projects, managing infringement risk (including analysis and response to infringement assertions), and managing IP transactions ( including generating and reviewing joint development and other IP transaction agreements), and managing IP due diligence. Report to the Vice President of IP Operations in the U.S. Will have primary responsibility for IP activities associated with certain client operations and products, but will work as part of the company IP team, and where appropriate commercial attorneys, and other staff supporting IP matters. Contribute to the implementation of the company's overall strategy for the protection of intellectual property. Drafting legal documents, including joint development and non-disclosure agreements. Managing the preparation and prosecution of patent applications, including coordination with outside US and foreign patent prosecution counsel. Supporting the company’s patent strategy and engaging in activities to enhance the company’s patent portfolio. Managing one or more patent committees. Representing the company in patent office proceedings e.g., oppositions, interferences and other adversarial proceedings in patent offices and courts. Conducting and managing freedom-to-operate studies to avoid patent disputes, including infringement analysis and competition patent portfolio analyses, managing and reviewing outside counsel opinions. Ensuring that internal worldwide clients are fully aware of the significance of intellectual property matters, including providing intellectual property training on obtaining patents, and protection of copyrights and trade secrets. Resolving legal issues and providing proactive legal advice and counsel in relation to intellectual property matters. Researching and summarizing laws and cases. Working with outside counsel on select matters. Communicating advice and status of IP matters to internal clients and IP management team.
Qualification and Experience
The candidate should have Bachelor's Degree or higher in Mechanical/ Electrical/Petroleum Engineering or related field, with oilfield service technologies experience preferred. Should be a U.S. qualified lawyer (J.D.) with current state license. Must be registered to practice as patent attorney before the U.S. Patent and Trademark Office. Must have 5+ years of active practice within the intellectual property field, including preparing and negotiating license agreements and other intellectual property related contracts, experience in preparation and prosecution of patent applications in the U.S. and/or in other jurisdictions (e.g. PCT, EPC), evaluating and preparing patent opinions, and supporting litigation of patents and other intellectual property disputes. Should have strong IP legal skills. Must have strong interpersonal skills including ability to engender trust, respect and confidence. Excellent written and oral communication skills including the ability to communicate and interact effectively at all levels of the organization are needed. Oil field service company experience preferred.
Job ID: 00268124
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