Job Details

Intellectual Property Counsel

Company name

UnitedLex Corporation

Organization Type

In-House

Job Type

Attorney

Date Last Verified

May 21,2019

Valid Through

Sep 03,2019

Posted on

May 15,2019

Years of Experience

3-5 yrs required

Location

Dearborn, MI, United States

Employment Type

Full-time

Industry

Legal
Practice Area
Intellectual Property >> Intellectual Property - Litigation >> Intellectual Property - Litigation - Hard Sciences >> Computer Science
Intellectual Property >> Intellectual Property - Litigation >> Intellectual Property - Litigation - Hard Sciences >> Electrical Engineering
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Intellectual Property Counsel
The candidate will develop a SMART patent portfolio throughout the lifecycle of each IP asset by owning the process from invention harvesting to final renewal/abandonment decision. Develop a deep understanding of the client business and provide value-added services, including, Competitive Landscape Analysis (CLA) and patentability counseling. Lead and mentor assigned patent agents/engineers to improve quality of invention disclosures and to identify/develop uncaptured or underdeveloped high-value/breakthrough inventions. Manage outside counsel preparation and prosecution of patent applications focusing on asset quality and cost control. Actively participate in post allowance review process to ensure maximum asset value. Identify licensing and other monetization opportunities. Identify and investigate infringement by others. Provide subject matter expertise in the evaluation of threats and/or in-bound licensing requests. Support IP transactions, including, Joint Development Agreements, M&A, Joint Ventures, Asset Transfer Agreements. Support development of global IP strategy. Provide IP counseling to clients in support of business efforts and initiatives.

Qualification and Experience

The candidate must have BS in Engineering or Computer Science. MA, PhD or other advanced degree is a plus. J.D. and active licensure in good standing before the Bar of at least one US jurisdiction is critical. Registered to practice before the USPTO is essential. 3-5 years patent preparation and prosecution at a law firm or in-house is required. Strong written and verbal communication skills are must. Experience with global filings is a strong plus (particularly EPO, Germany, China). Prior patent litigation experience is an asset.

Additional info

REF- 19000114

Company info

Hiring Coordinator
UnitedLex Corporation
Fairlane Plaza South
330 Town Center Drive
Dearborn, MI 48126