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Years of Experience
Date Last Verified
ProfileIP Attorney The candidate will meet business and corporate IP needs by providing a full range of IP services and counseling to assigned business clients, and building and maintaining a portfolio of patents and other IP that advance the technical and commercial interests of the company. It is contemplated that this role would engage across several programs and technologies and would have a significant focus on patent preparation and prosecution. Key Accountabilities Include: Partners with the business to develop and execute IP strategies aligned with commercial and technical objectives. Manages global patent portfolios from invention disclosure through enforcement and agency procedures, including substantial preparation, prosecution, and maintenance of company’s US patents, and supervision of US and foreign outside counsel. Performs risk assessment studies relating to business activities, new product plans, and commercial and technical strategies, and provides legal opinions as to patent scope, infringement, and validity. Supports patent assertion, challenges, and litigation efforts, as appropriate. Monitors the competitive IP space and works with competitive intelligence group for the relevant business(es) to identify potential infringing products. Participates in M&A due diligence activities. Performs substantive transactional work, including negotiation and drafting license, joint-development, sponsored research, material transfer, and other IP-related agreements. Counsels the business on various legal matters, including competitor’s IP, public disclosure of information, what information can be disclosed at a trade show, what can be published, etc. Provides departmental and Company-wide training and seminars on relevant IP and information management related topics. Provides ad-hoc support to, and maintains open communication with, Law Department attorneys leveraging an extensive knowledge of relevant IP law and technical areas of expertise. Mentors other professionals. Participates in or leads improvement projects and Law Department initiatives.
Qualification and Experience
The candidate should have JD degree and member in good standing of state Bar and registered to practice before the USPTO. Should have BS and/or advanced degree in relevant technology (Materials Science or Chemical Engineering degrees and background preferred, but other technical backgrounds and experience that correspond well with our materials and chemistry-related technologies will be considered). Very good written and verbal communication skills. Ability to identify and manage risks and recommend appropriate solutions consistent with the relevant risk tolerances of assigned business and the Company. Should have 3-5 years as a practicing patent attorney (law firm experience preferred). Significant experience preparing and prosecuting patents, including supervision of foreign counsel. Experience performing risk analyses and drafting infringement and validity opinions. Prior technical or patent examiner experience; e.g., engineering or other technical role in industry. Exposure or experience drafting IP agreements and negotiating of IP transactions. Experience in litigation or USPTO or other patent office procedures.
Req #: 322