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Intellectual Property - General Attorney in Bridgewater, NJ

Ingredion Incorporated Aug 16,2018 May 28,2018 Location Bridgewater NJ
This job is expired...

In-House

Attorney

Intellectual Property - General

Min 8 yrs required

Profile

Senior Intellectual Property Attorney The candidate will actively lead a global patent portfolio, including evaluating invention disclosures (including patentability assessments), drafting patent applications that meet U.S. and international patentability standards, prosecuting domestic patent applications before the USPTO, leading the filing and prosecution of international patent applications, and coordinating/managing reexaminations, IPRs, invalidation actions, appeals, and oppositions, including assessing and developing the associated strategies. Actively engage with the global business and innovation group to develop, implement and lead IP strategies for products in development, including freedom-to-operate assessments and patent and trademark filing strategies, as well as IP strategies associated with firm’s existing portfolio of products. Align the global patent portfolio with key strategic business drivers and provide client counseling on IP matters, including when to patent, publish, or maintain as a trade secret. Develop and implement IP standard methodologies, policies, and procedures. Help develop and provide IP training seminars to raise IP awareness across the global organization, including through in person training, video- or web-enabled training or train the trainers approaches. Conduct IP due diligence of third-party IP assets, including communicating outcome of assessment to senior management, and drafting and negotiating the IP provisions of the associated in-licensing, purchase, or JV agreement. Draft and negotiate non-disclosure, material transfer, joint development, patent license, and other agreements. Actively lead and set IP matter budgets (including performance against such budget), lead cost reduction initiatives, and identify and select external legal counsel including negotiating legal fees and improving the overall efficiencies and cost management processes and procedures. Should have JD degree from an ABA accredited U.S. law school. BS, MS, or PhD degree in chemistry or related scientific field. Subject matter expertise in the area of hydrocolloids, food research, and food applications is a plus. Must be licensed to practice law in at least one U.S. jurisdiction. Must be registered to practice before the United States Patent and Trademark Office. Should have 8+ years of combined law-firm and corporate legal experience preparing and prosecuting domestic and international patent applications, preferably in the chemical, biotechnology, and/or food science related arts, including developing and implementing patent filing and prosecution strategies, providing patentability, validity, and freedom-to-operate assessments, and drafting agreements, in particular the IP provisions contained in such agreements. Experience using online databases (e.g. USPTO, Epoline, Questel Orbit, etc), and internet resources is required.

Additional info

Requisition ID 2018-3490

Company info