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Years of Experience
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Intellectual Property Counsel â€“ Prosecution / Technology The candidate will develop, maintain, vet and counsel on a worldwide portfolio of high technology patents and applications in support of a diverse conglomerate of global companies. Will instigate and develop patent portfolio processes bringing rigor, clarity and focus on high value IP assets. Bring a depth of understanding to assist in the international preparation and prosecution of software and IT service related technologies. Assist in building and maintaining world-class IP analytics capabilities and tools. Grow, measure and track demonstrative IP value across a diverse set of assets. Maintain strong working relationships with key international IP law firms in all primary geographies. Support various patent monetization, IP licensing and investment programs. Support IP due diligence activities in conjunction with corporate M&A. Responsible for supporting legal arguments for IPRs, validity challenges as well as opposition proceedings. Work closely with corporate R&D functions to ensure that sufficient ideas and invention disclosures are generated and ultimately filed. Some trademark counselling.
Qualification and Experience
The candidate should have Master's or Bachelor's degree of Science in a Physical Science and/or Engineering discipline. JD degree with membership in at least one state Bar is needed. Must have qualification as a European or US Patent Attorney, with 7+ years of post-qualification IP legal and patent prosecution experience. Prefer both in-house and law firm experience is needed. Deep experience in international software and IT service patent prosecution is preferred. Should have 4+ years of experience managing high value global patent portfolios. Strong IP-specific financial acumen is needed. Experience growing, managing and claim charting a high quality patent portfolio is needed. Exceptional negotiation and communication skills are essential. Broad and deep legal expertise across multiple vertical segments are needed. Technical depth in one of more of the following disciplines: machine learning, computer vision, mobile technologies, operating systems, networked communication protocols and standards, network infrastructure, natural language processing, trusted distributed computing, trust services and cybersecurity is needed.
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