Job Details

Chief Intellectual Property Counsel

Company name

Organization Type

In-House

Job Type

Attorney

Years of Experience

Min 12 yrs required

Location

San Antonio, TX

Date Last Verified

Sep 22,2017

Posted on

Aug 16,2017
Practice Area
Intellectual Property >> Intellectual Property - General
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Chief Intellectual Property Counsel The candidate will report to the SVP, Enterprise Shared Services. Overall responsibility for strategy, planning, development, enforcement, protection, and ongoing management of the intellectual property portfolio of the Company, with a clear focus on patents, but also including trademarks, trade secrets, and copyrights, to ensure that the portfolio efficiently and effectively supports the company’s long-term strategy. Liaise with executive management on Company IP strategy. Provide strategic patent and trademark protection services, including monitoring of R&D and identification of meritorious innovations; oversee referral of innovations to inside or outside counsel for filing of patent applications; manage defensive publications processes; oversee licensing of intellectual property; and monitor and address infringement of company’s patents, copyrights, and trademarks worldwide. Evaluate third party IP and providing company strategy recommendations; counsel on related legal and business options; and manage patent surveillance services, including working with business units to monitor IP landscape competitors and licensing opportunities. Manage the intellectual property conflict practice, including the delivery of the services to investigate, analyze, and resolve conflict matters. Manage, together with the Head of Enterprise Litigation, the defense of infringement actions against company and create and run programs to ensure enforcement of company’s intellectual property rights; and litigation in which company’s intellectual property rights are challenged. Interface with company’s executives regarding transactions, initiatives, and issues involving intellectual property including analysis and due diligence of intellectual property issues associated with the company’s merger and acquisition activities or acquisitions of intellectual property portfolios. Provide IP counseling to management regarding effective use of IP, and methods to avoid or reduce adverse impacts of IP rights of others. Render IP advice on Company issues, including business deals, joint development programs, Company inventor programs, IP policies and IP employment issues (including consulting and indemnification issues). Analyze changes in laws related to IP in the U.S. and internationally. Direct the development of guidelines and policies to comply with these laws and assess laws and recommend legislative proposals. Manage outside counsel, control quality of the service, and oversee efficient use of the budget allocated to outside counsel fees. Create and manage education, information, training, and compliance programs regarding IP matters on an ongoing basis for a broad range of company personnel including software engineers.

Qualification and Experience

The candidate should have Bachelor’s Degree. Must have 12+ years of progressive related experience developing strategies, managing major initiatives and delivering results within a complex matrix environment. 6+ years of people leadership experience in building, managing and/or developing high-performing teams required. Experience collaborating with key resources and stakeholders, influencing decisions and managing work to achieve strategic goals. JD degree and 8+ years practicing IP law essential. Licensed by the USPTO. Experience with the financial services industry is preferred. Ability to assess other companies’ IP portfolios and understand their position in the competitive market place. Strong communication and interpersonal skills essential. A demonstrated ability to effectively influence, lead and motivate others at all levels, strong team, business, project and people management skills, strong business and legal negotiation skills, strong client counseling skills, and strong public advocacy skills. Ability to articulate the IP vision and strategy and garner support from above and below. Ability to build consensus within senior management for IP strategy. Familiarity and comfort with technologies relating to the company’s products, services, and overall business strongly preferred.

Additional info

Job Number: R0011391

Company info

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