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Years of Experience
Date Last Verified
ProfileLegal Counsel Duties: Lead the Intellectual Property efforts and will act as a key partner and legal adviser to the business regarding all intellectual property matters. Responsibilities include setting and advising on IP strategy that will identify and capture high value innovation and create long term business value and ensure alignment with company business strategies and goals. In collaboration with the General Counsel, leads the development and sets the strategy for protecting all intellectual property. Independently manages intellectual property portfolio including managing outside counsel, drafting and filing patent applications and responses to office actions and briefs, and establishing US and International patent strategies. Partnering with the General Counsel oversees, external counsel for any oppositions, interferences, litigation or other disputes related to the Company’s intellectual property. Leads intellectual property due diligence support and assessments in all business development activities including collaborations, mergers, acquisitions and investments. Provides value/risk assessment on third party IP estates and/or landscapes for collaborations, consortiums and other third party agreements. Provides a high quality level of professional, cost effective, proactive and responsive legal services to internal clients in the area of intellectual property. Manages the company’s patent portfolio, including soliciting and evaluating invention disclosures, conducting patentability investigations, filing, prosecuting, issuing and maintaining patent applications and patents domestically and internationally in coordination with and through managing outside counsel. Enforces the Company’s intellectual property rights through investigation of competitors’ products and supporting negotiation of favorable intellectual property licenses and litigation. Analyzes third party claims alleging intellectual property infringement by our products or services, including conducting and/or managing infringement and validity investigations and supporting negotiation of favorable intellectual property licenses and defense in intellectual property litigation. Provides support to legal transactional team by analyzing and commenting of IP terms of various agreements. Provides legal advice on obtaining copyrights, protecting trade secrets and avoiding infringement of the copyrights and trade secrets of others. Manages the trademark process, including the acquisition of trademarks, advising and training on mark selection and use, conducting right to use investigations, and filing, prosecuting, issuing and monitoring trademark applications and registrations in coordination with and through managing outside counsel. Reviews company product literature, reports to customers and collaborators, and proposals to the government to ensure intellectual property in such disclosures is adequately protected. Proactively anticipates IP legal issues before they become problems by practicing preventive law and by early involvement. Provides training and written guidelines on the acquisition and preservation of intellectual property rights. Maintains up to date knowledge of the Company’s technology.
Qualification and Experience
Qualifications: Bachelor of Science in engineering from an accredited university, strongly prefer mechanical or electrical/electronics. JD Degree or equivalent degree from an accredited law school; member of state bar. Must be licensed as a Patent Attorney by the United States Patent and Trademark Office Experience. 5+ years of relevant work experience. Experience as an in-house patent attorney or patent agent for a company. Prior experience with preparation/prosecution of patent applications, freedom to operate assessments, contentious proceedings at the USPTO and globally (including IPRs, reexaminations, interferences, oppositions), IP infringement analysis and conducting IP due diligence in support of collaborations, acquisitions, divestitures and other transactions. Prior experience in developing IP portfolios for high-growth technology companies. Experience managing outside counsel Knowledge, Skills and Abilities. Ability to think and act with creativity and strategic acumen. Must possess strong skills in client relationship management with members of senior management and other potential employee inventors, primarily within the engineering department. Ability to communicate with people at all levels in the organization, including communicating complicated technical IP issues to non-technical members of the organization and communicating difficult IP legal concepts to senior leadership. Ability to make critical decisions on contentious IP matters with core competitors. Ability to set and meet deadlines, handle multiple complex legal matters and see projects through to conclusion. Strong attention to detail, ability to meet deadlines, prioritize work. Demonstrated strong strategic and analytical thinking. Exemplifies the highest ethical standards. Strong work ethic and demonstrated ability to manage a high volume workload with minimal supervision. Demonstrated business acumen. Excellent work ethic, teamwork and commitment to professionalism. Ability to exhibit sound judgment and maintain confidentiality. Demonstrated success working effectively as a team member.
Requisition Number: 16-0040