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ProfileCorporate Counsel Senior - IP The candidate will handle complex technology transactions such as licensing, outsourcing, and commercial transactions, and related intellectual property issues in connection with joint ventures, mergers and acquisitions, and other transactions. Will work with the Chief Intellectual Property Attorney and IP legal team to manage, maintain and enforce company's IP, including the trademark and patent portfolios, and handle a variety of intellectual property issues including litigation matters, particularly intellectual property infringement claims. Report to company's Chief Intellectual Property Attorney and interact with the legal, business and development teams. Manage and oversee the prosecution of patent, trademark and copyright applications - both in the US and International jurisdictions. Develop and implement strategy, procedures and programs to develop and maintain the intellectual property portfolios and legal rights of the company, with an emphasis on the patent portfolio strategy and evaluation of new inventions. Assist in patent litigation and pre-litigation activities, including working with the IP Counsel and outside counsel to develop strategies to defend, resolve and prevent various forms of litigation. Assist legal team in contract review and analysis regarding intellectual property issues. Prepare applications for patents, copyrights, and trademarks and presents applications to the USPTO. Draft, negotiate, and interpret IP licenses and contracts. Evaluate the validity of competitors' patents and potential company product infringement upon valid patents of competitors. Responsible for pre-patent filing review, providing legal advice to the company concerning the patent viability of its inventions and the advisability of filing patent applications covering the company's inventions. Conduct administrative activities related to intellectual property records/databases and other general duties as assigned. Should have a J.D. degree. Should be admitted to practice law and a member in good standing of any State Bar. Must have 5-10 years of experience in intellectual property and intellectual property transactions with a background in financial services and/or computer software industry. Registration to practice before the USPTO is desired.
Job ID #: JR22926