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Intellectual Property Counsel The candidate will manage a docket of patent matters in one or more technology areas including preparing and prosecuting patent applications before the USPTO. Oversee a global network of outside counsel and provide guidance and instructions based on principles of patent prosecution, the technology/product and roadmaps, and corporate strategy, and global portfolio maintenance decisions. Support various members of the Legal team in M&A transactions with respect to IP due diligence. Collaborate across law department groups, business units and functions to improve patent operations and business processes. Draft, review and negotiate routine types of IP terms and clause for agreements, including nonÂdisclosure, development, collaboration and licensing agreements, with, clients, suppliers, and other law department groups. Directly interact with the business product teams and research technology teams to support new product and project development. Advise and counsel internal business units on various IP matters with a particular focus on global patent issues. Interact directly with engineering to harvest invention disclosures and provide IP training. Support internal clients by providing strategic patent advice on firmâ€™s patent portfolio and managing risk with respect to third party portfolios. Participate in patent committee meetings. Assist in patent divestitures, acquisitions and licensing. Work with a global team of patent professionals made up of attorneys, paralegals and patent engineers to define and refine processes used in global patent operations. Provide patent analysis for all contexts, including litigation, potential acquisition, and licensing. Assist in proactive, strategic management of patent litigation and patent assertions. Should have JD degree and Bar admission (or equivalent in jurisdiction), and registered before the USPTO; knowledge of foreign patent practice and rules a plus. Technical background is not required however a background or strong familiarity with electrical engineering, physics, computer science, mechanical engineering, audio components and/or acoustics is a plus. Must have 3+ years of patent prosecution experience with a strong background in global IP law. Law firm, in-house or other comparable experience with large and complex IP portfolios a plus. Knowledge of utility, design, copyright and other IP areas needed. Excellent web-based and other investigation and research skills/experience are needed. Should have sound computer skills including IP maintenance database software (e.g. Anaqua), PPT and Excel. Experience drafting IP related contractual documents such as co-existence and settlement agreements, and licenses highly desired.
Requisition Id: 108502
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