Job Details

Corporate Counsel Senior Ip

Company name

FIS Company

Organization Type

In-House

Job Type

Attorney

Date Last Verified

May 24,2019

Valid Through

Sep 06,2019

Posted on

Jul 02,2018

Years of Experience

7-12 yrs required

Location

Jacksonville, FL, United States

Employment Type

Full-time

Industry

Legal
Practice Area
Corporate >> Corporate - General
Intellectual Property >> Intellectual Property - General
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Corporate Counsel Senior - IP
The candidate will be primarily responsible for handling complex technology transactions such as licensing, outsourcing, and commercial transactions, and related intellectual property issues in connection with joint ventures, mergers and acquisitions, and other transactions. Additionally, the attorney will work with the Chief Intellectual Property Attorney and IP legal team to manage, maintain and enforce firm's Intellectual Property, including the trademark and patent portfolios, and handle a variety of intellectual property issues including litigation matters, particularly intellectual property infringement claims. This attorney will report to firm's Chief Intellectual Property Attorney and interact with the legal, business and development teams. Provides counsel to both the business and legal teams. Primary responsibility is for matters related to intellectual property transactions. Assist Legal Team in contract review and analysis regarding intellectual property issues. Assist in patent litigation and pre-litigation activities, including working with the Intellectual Property Counsel and outside counsel to develop strategies to defend, resolve and prevent various forms of litigation. Develop and implement strategy, procedures and programs to develop and maintain the intellectual property portfolios and legal rights of the Company, with an emphasis on the patent portfolio strategy and evaluation of new inventions. Manage and oversee the prosecution of patent, trademark and copyright applications; both in the US and International jurisdictions. Prepares applications for patents, copyrights, and trademarks and presents applications to the U.S. Patent and Trademark Office (USPTO). Drafts, negotiates, and interprets IP licenses and contracts. Evaluates the validity of competitors' patents and potential company product infringement upon valid patents of competitors. Responsible for pre-patent filing review, providing legal advice to the company concerning the patent viability of its inventions and the advisability of filing patent applications covering the company's inventions. Conduct administrative activities related to intellectual property records/databases and other general duties as assigned.

Qualification and Experience

The candidate should have Juris Doctor (JD) degree. Must be admitted to practice law and a member in good standing of any State Bar. Must have 7-12 years of experience in intellectual property and intellectual property transactions. Registration to practice before the U.S. Patent and Trademark Office (USPTO) is required.

Additional info

Job ID #: JR41160

Company info

Hiring Coordinator
FIS Company
601 Riverside Avenue
Jacksonville, FL 32204

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