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In-House
Attorney
Intellectual Property
Litigation - Whistleblower - CFTC
8-10 yrs required
Senior Counsel, Intellectual Property Transactions Responsibilities: Will report to the Director, Intellectual Property Transactions and Counseling for IP Sales and Licensing, company's enterprise services, software, and Labs. Will provide IP transactional support and advice primarily to company's IP Sales and Licensing group. Advise sales and licensing team on legal risks in a compressed-timeline, business-critical deal environment. Provide business-focused IP solutions to all levels of management within the supported client group. Handle complex IP and technology transactions, such as patent sales and licensing, patent pool and standards agreements, and other IP agreements. Responsibilities include agreement drafting, negotiation, and encumbrance review. Will perform infringement and evidence of use analysis and prepare, present and defend claim charts. Assist developing junior IP attorneys with limited transactional experience. Communicate company's IP strategy effectively at all levels within company's organization and prevent loss of IP value by obtaining the best possible IP terms for company in all IP centric transactions. Prepare and review submissions to company's IP Approval Board for escalation, review and approve non-standard IP terms, review company's participation in standards setting organizations and patent pools and work on other non-product related IP out-licensing. Exercise thought leadership on key IP issues for company by influencing selected governmental organizations and professional bodies and speaking at conferences.
Qualification and Experience
Qualification Requirements: a Juris Doctor (JD) degree, Bar qualification; USPTO/EPO/JPO Admission (or equivalent)Appropriate technical degree (EE, CS, Physics or equivalent). Industry knowledge in appropriate technology fields is a plus. 8-10 years of proven experience and success in providing IP transactional counseling in a high technology environment, including experience providing legal support for substantial patent sales and licensing activities. Transactional experience in monetizing IP is preferred. Strong understanding of intellectual property law required. Strong team player with excellent collaborative and influencing skills. Excellent communication skills, both verbal and written, including the ability to deliver executive level presentations and an ability to successfully interact with a wide variety of clients, business partners, competitors, opposing counsel and others.
Ref. # 1421623.
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