Job Details

Electrical Engineering Attorney / Mechanical Attorney / Physics Attorney / Biochemistry Attorney / Biology Attorney / Chemistry Attorney in Franklin TN

Organization Type

In-House

Job Type

Attorney

Date Last Verified

Sep 17,2019

Posted on

Aug 26,2019

Years of Experience

Min 15 yrs required

Location

Franklin, TN, United States
Practice Area
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Hard Sciences >> Electrical Engineering
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Hard Sciences >> Mechanical
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Hard Sciences >> Physics
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Life Sciences >> Biochemistry
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Life Sciences >> Biology
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Life Sciences >> Chemistry
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Associate General Counsel - IP
The candidate will protect the Intellectual Property Assets created by the Global Pet Care Segment and ensure the freedom for all business unites in the Global Pet Care Segment to operate without infringing the Intellectual Property of others and be competitive in the marketplace. Will protect and enforce the Segments' patents; lead all patent opposition and related matters for the Segment globally; assist, and where assigned by the IP General Counsel, assume leadership for patent litigation. Hire, supervise, train and evaluate the Segment's patent lawyers, patent paralegals and support staff; implement an effective program to continue to motivate, mentor and retain members of the Segment's IP team. Ensure that the IP team provides necessary IP legal support, as appropriate, to the Segment's Research & Development, commercial (procurement), technology, business development, supply, and sales and marketing teams. Liaise with the Segment's general counsel, legal leads for the Pet Health businesses, Kinship leadership, IP- Marketing Properties legal team, research and development teams, marketing and business associates to develop and implement a well-conceived strategy to optimize the Segments' IP - Patent & Technology position, including evaluating the patent portfolios of competitors. Counsel, negotiate and draft Research Agreements with Universities, Consulting Agreements, Collaboration and pilot research Agreements, Non-Disclosure Agreements and related IP Agreements. Coordinate with Segment's Marketing Properties team on overlapping issues to ensure continuity and robustness in the protection and management of the Segments' IP. Ensure proper pre-patent filing review; provide legal advice to the Segment's management concerning the patentability of its inventions and the advisability of filing patent applications domestically and internationally. Continually refine the portfolio mapping and life cycle management program for the Segment's patent portfolio. Liaise with Segment management to assess the IP implications of possible corporate, external partners including University alliances and transactions. Work with patent counsel of strategic partners and collaborators to protect the intellectual property of the inventions created under the collaborations. Generate and circulate competitive intelligence within and outside of the Segment to ensure awareness of and the appropriate response to competitor activities. Provide IP due diligence support to other law department members in connection with technology investments and business acquisitions. Set and manage the Segment's patent budget and approve spend against the budget.

Qualification and Experience

The candidate should have a law degree from a well-regarded law school, be a full member of a State Bar, and be admitted to practice before the USPTO. If not a member of the State Bar in which the position is located, then must take steps to gain admission by complying with the rules for that State in-house corporate counsel. Should preferably hold an undergraduate science degree in one of the following disciplines: chemistry, biology, chemical engineering, biochemistry, or food science. Candidate with degrees in mechanical engineering, electrical engineering, physics, or other scientific disciplines will be considered. Must have 15+ years as a practicing intellectual property lawyer; if an in-house lawyer, law firm experience earlier in career is preferred. Should have significant experience in the preparation and prosecution of patents, including the development of IP portfolios relevant to the life cycle of products. Significant experience providing clearance opinions; experience working on patent litigation is highly preferred. Experience counseling management on litigation strategy and other litigation matters is desired. Should have an understanding of the corporate environment, and specifically the importance of the linkage between a company's business objectives, research and development efforts, and its patent protection and enforcement efforts. Experience leading and developing a team of attorneys and legal professionals is needed. Exposure to global patent issues is essential. Experience evaluating the patent portfolios of competitors and general understanding of the competitive landscape globally is a must. Experience working with outside counsel on validity opinions and patent litigation is required.

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