Job Details

Senior Counsel - Patent Law

Company name

Organization Type

In-House

Job Type

Attorney

Years of Experience

Min 8 yrs required

Location

Richardson, TX

Date Last Verified

Oct 11,2017

Posted on

Oct 02,2017
Practice Area
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Hard Sciences >> Intellectual Property - Patent - Hard Sciences General
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Life Sciences >> Intellectual Property - Patent - Life Sciences General
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Senior Counsel - Patent Law The candidate will lead the IP efforts within the company's Space and Airborne Systems (SAS) business. Will work closely with all team members within the Office of General Counsel. May manage outside counsel and any outside consultants to protect and exploit company's technology. Will report to the Vice President, General Counsel of the SAS business and a strong dotted line relationship to the Vice President, Legal, Intellectual Property. Partner with the business and technology teams and internal SAS business counsel to provide guidance and leadership on intellectual property strategies involving patent, trademark, trade secret, copyright issues. Understand and advise internal contracts and engineering functions on US Federal Acquisition Regulations (FAR) and Defense Federal Acquisition Regulation Supplement (DFARS) provisions relating to intellectual property and data rights, to maximize intellectual property protection around core technologies within such a regulatory. Develop and review intellectual property terms for: inbound and outbound licensing of intellectual property including software licensing, supplier agreements, teaming agreements, non-disclosure agreements and other business agreements, including those relating to mergers, acquisitions and joint ventures. Participate in proposal reviews, provide IP guidance to executives during such reviews. Work with engineers and IP staff to assist in the review of invention disclosures to ensure the development of a strong patent portfolios. Work with business development and communications professionals to develop strong trademarks. Support with internal litigation and corporate IP counsel and outside counsel, any intellectual property disputes that may affect the business. Provide training to diverse client set on a variety of intellectual property topics and issues affecting the business, including current IP topics in US and foreign government procurement. Work with other intellectual property counsels on various projects, assist the IP Licensing team members in their efforts to exploit business technologies, software and patents. Manage outside counsel to promote the delivery of cost effective, quality, legal services. Provide management reporting as needed to evaluate efficiencies, spend, utilization and other management factors.

Qualification and Experience

The candidate should have a J.D. degree from an accredited law school. Should also have a B.S. degree in Engineering or Physical Sciences. M.S. degree is a plus. Must have 8 years of experience in a law firm or in-house legal with significant IP/patent, transactional and licensing experience. Experience in working with engineers and business leaders is required. Experience with contracts or procurement organizations is a plus. Experience with US government procurement regulations including the FAR and the DFARS is needed. Must be a member in good standing of a state Bar, and eligible for admission as in-house counsel in Texas or California. Should be admitted to practice before the USPTO. Should have familiarity with database tools such as MS Access and IP specific tools such as Memotech, Questel and CaseTrack (Legal Tracker).

Additional info

Requisition ID: 100457BR

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