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Years of Experience
Date Last Verified
IP Attorney Duties: Reports directly to the Director of Intellectual Property and serves as in-house attorney handling all aspects of the companyâ€™s intellectual property matters. Will be to develop and manage the companyâ€™s patent portfolio including capturing inventions and prosecuting patent applications, as well as conducting product clearance, advising on third party IP issues and setting IP strategy. Managing patent portfolio related activities, including the preparation and prosecution of U.S. and foreign patent applications. Conduct product clearance. Lead potential invalidity investigations. Encourage and develop new IPâ€“Work with technology divisions to develop new IP through the â€œinvention disclosure programâ€ (process to encourage innovation, track lab notes and ideas and convert this data to IP). Administer the IP functionâ€“Craft, implement and continually refine IP company policies; Monitor and protect the companyâ€™s IP portfolio; Send cease and desist letters when necessary; Work with other in-house counsel to integrate the companyâ€™s IP matters into other functions, such as business development matters and be capable of identifying and/or valuing competitor IP; Participate in the companyâ€™s IP meetings; General legal support and advice to technology associates. Provide support on all matters concerning trademarks, including performing and evaluating trademark searches; preparing search reports, and communicating with clients regarding trademark availability. Other IP related workâ€“Draft and negotiate non-disclosure agreements; Structure and draft technology transactions and agreements (or assist other in-house counsel in doing so); Manage outside IP counsel on certain matters, including litigation (or assist other in-house counsel in managing the litigation), advise in M&A cases, develop strategies for patent and/or technology licensing. Handle complex legal projects. Conduct legal research and interpret laws, rules, regulations and ordinances.
Qualification and Experience
Qualifications: Bachelorâ€™s Degree in Engineering or other related discipline. JD Degree from an ABA approved and AALS accredited school. Strong academic credentials. Registered to practice before the U.S. Patent and Trademark Office. Licensed to practice law. 8+ years' intellectual property experience in the technology sector, with 4+ years focused on patent prosecution, preferably at a large law firm and four years in-house working in a cooperative nature directly with gaming business associates. Gaming, game development experience preferred. Detailed and extensive experience in all IP areas and be comfortable developing the companyâ€™s IP portfolio while working directly with and supporting various key departments including game design, R&D, engineering, product management, compliance and sales on gaming-related patents, trademarks, licensing, policies and other matters. Requires experience in domain name protection, managing complex domestic and international IP issues, and negotiating settlement agreements. Knowledgeable and contribute to trademark and related soft IP matters. Strong knowledge of patent related matters and processes required for consideration. A deep understanding of a wide variety of IP issues, including trademark and other soft IP, and ability to provide practical recommendations and guidance to all levels of the organization. State or federal gaming statutes, IP litigation, foreign practice, compliance, or M&A experience a plus. Meticulous attention to detail while meeting deadlines. Excellent organizational skillsâ€”ability to handle multiple ongoing projects with minimal supervision. Strong analytical, business, negotiation and communication skillsâ€”you must be able to absorb complex legal issues and communicate these issues in a simple and understandable manner. Strong investigative and trademark research skills. Excellent business judgment with an ability to think strategically. Positive attitude, be comfortable taking initiative, embrace teamwork. Domestic travel required; mainly to satellite office(s) and gaming shows. Should have experience working in a heavily matrixed environment. Experience with gaming technology related IP matters. Knowledge of CT Corsearch or similar searching system. Knowledge of CPi or similar docketing system.
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