Job Details

Attorney, IP Transactions and Counseling

Company name

Organization Type

In-House

Job Type

Attorney

Years of Experience

5-10 yrs required

Location

Berkeley Heights, NJ

Date Last Verified

Sep 12,2017

Posted on

Aug 30,2017
Practice Area
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Hard Sciences >> Physics
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Hard Sciences >> Electrical Engineering
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Hard Sciences >> Computer Science
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Attorney, IP Transactions and Counseling The candidate will report to the Associate General Counsel, Intellectual Property Transactions and Counseling. Will provide IP transactional support to both business unit clients and to the IP Sales and Licensing team. Will also support M&A and other special projects as needed. Provide business-focused IP solutions to all levels of management within the supported client group. Handle complex IP and technology transactions such as joint development agreements, patent sales and licensing, patent pool and standards agreements, university collaboration agreements, NDAs and other IP agreements. Responsibilities include agreement drafting, negotiation, and encumbrance review. Perform infringement and evidence of use analysis and prepare, present and defend claim charts. Communicate company's IP strategy effectively at all levels within company and prevent loss of IP value by obtaining the best possible IP terms for company in a wide range of transactions. Advise clients on legal risks in a compressed-timeline, business-critical deal environment. 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.

Qualification and Experience

The candidate should have a J.D. degree and Bar qualification. Appropriate technical degree (EE, CS, Physics or equivalent) is required. Must have 5-10 years of proven experience and success in providing intellectual property transactional counseling in a high technology environment, including experience providing legal support for patent monetization activities. Strong understanding of intellectual property law required. Industry knowledge in appropriate technology fields is a plus. USPTO/EPO/JPO admission (or equivalent) is needed. Some travel may be required.

Additional info

Ref. #: 1007400

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