Job Details

Intellectual Property Counsel

Company name

Organization Type

In-House

Job Type

Attorney

Years of Experience

Min 8 yrs required

Location

Florham Park, NJ

Date Last Verified

Aug 04,2017

Posted on

Jul 08,2017
Practice Area
Intellectual Property >> Intellectual Property - Litigation >> Intellectual Property - Litigation General
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Life Sciences >> Chemistry
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Intellectual Property Counsel Duties: Provide, in a timely and effective manner, the highest-quality legal support for a broad range of business-oriented IP services for, and to build partnerships with, assigned R&D and business units within Corporation. Will have direct responsibility for providing the following legal support to the Catalysts division’s battery materials business unit and heterogeneous catalysis research group. Collaborate with R&D and business unit clients to timely identify all agreements necessary to implement their respective objectives. Advise R&D and business unit clients on IP contract issues and interpretation. Conduct IP due diligence for M&A transactions. Review, negotiate, and draft a broad range of contracts such as: Confidentiality agreements with universities, research organizations, commercial partners and private sector institutions to implement long-term strategic and commercial objectives for the subject IP; Material transfer agreements covering early-stage, proprietary chemistry and/or biotechnology materials and/or products; Service agreements; Consultant agreements; License agreements, including complex, cross-border in- and out-license agreements, cross-license agreements, development license agreements, and license and supply agreements; Technology transfer agreements; IP asset acquisition agreements; and IP asset divestiture agreements. Non-Transactional Responsibilities, handled directly, with the global IP team, and/or through management of outside counsel: Advise on patentability, validity, and infringement. Serve as senior IP advisor to your assigned R&D and business unit clients. Manage patent portfolios. Develop and implement patent strategies to protect innovations. Conduct freedom-to-operate assessments. Effectively communicate with people at all levels of the Company, including communicating complicated technical and legal issues to non-technical personnel, to enable critical decisions on IP and IP litigation matters. Work closely with other members of the IP, Legal and other functions, e.g., Tax, Insurance and HR, on regional and global levels. Provide IP litigation support, working in conjunction with US litigation attorneys and global IP team. Conduct and/or coordinate IP training, working in conjunction with US commercial attorneys and global IP teams. Employ deft social skills to mediate between, and balance, occasional competing R&D ND business units’ interests.

Qualification and Experience

Qualifications: JD degree and a license to practice law in at least one US state is required. Admission to practice before the USPTO is required. 8+ years of IP practice is required. In-house counsel experience is preferred. Experience in the field of battery materials, including in cathode materials, nickel metal-hydride, lithium-ion, lithium-sulfur and/or lithium-air technologies, is preferred. In-depth knowledge of IP transactional practice and of US patent and intellectual property law.

Additional info

Job ID: EN_US_1701450

Company info

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