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Years of Experience
Date Last Verified
Intellectual Property Counsel The candidate will support, counsel and partner with multiple global businesses of the company, whose technologies relate to contamination control, purification, filtration, critical materials handling, chemicals, specialty gases, specialty coatings and other technologies. Will prepare, present and implement a global IP strategy using IP landscape and competitor reviews. Manage a global IP portfolio. Act as the legal gateway for new product introduction to market activities, including landscape, freedom-to-operate, invalidity and novelty searching activities. Business partner to R&D and business managers, located in various countries, to advise and find solutions to complex IP issues Work with and manage outside counsel to crystallize inventions, effectively and strategically prosecute patent applications, and ensure claiming/patenting strategy satisfies the company’s technology strategy and business’ needs. Harvest, evaluate, and protect inventions and innovations. Draft IP related agreements and partner with business to negotiate, prepare, and/or review, for example, SRAs, JDAs, NDAs, and Technology Licenses. IP Litigation management, support and strategy. Provide IP training to R&D and business clients. Draft at least six patent applications annually, and prosecute patent applications – US and international. Conduct periodic meetings with business units to discuss intellectual property issues, portfolio reviews, and invention disclosure assessments. Perform risk assessments and deliver timely and informed legal counsel.
Qualification and Experience
The candidate must have Juris Doctorate degree from ABA accredited school. Should have B.S. degree (or higher) in Chemical Engineering, Material Science, or Chemistry; other engineering and/or science-related disciplines may be considered with significant relevant experience. Should be registered to practice at the US Patent and Trademark Office and licensed/admitted in one state Bar. Should have 5+ years of experience as a patent attorney, exposed to a broad range of IP including patent preparation and prosecution experience, creating an IP strategy, managing a docket, preparing clearance opinions, IP transactions, and counseling clients on IP –related issues. Should have 2+ years of experience in a corporate legal department. Experience drafting, reviewing and negotiating IP-related agreements is essential. Some patent infringement litigation experience is essential. Familiarity with PTO practice in Asia countries is essential. Ability to read and/or understand Chinese, Japanese, or Korean language is essential. Experience working within the semiconductor industry is a plus.
Job ID 2018-5270
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