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Computer Engineering Attorney / Electrical Engineering Attorney / Bioengineering Attorney in Winston Salem, NC

Reynolds American Inc. Jan 29,2020 Sep 12,2019 Location Winston Salem NC
This job is expired...

In-House

Attorney

Computer Engineering

Electrical Engineering

Bioengineering

5-7 yrs required

Profile

Senior Counsel – Patents The candidate will manage the patent portfolio in assigned areas, including working with Research and Development teams to harvest invention disclosures and managing prosecution of patent applications globally. Will conduct freedom to operate analyses and providing strategic legal advice to Research and Development specifically but also more broadly to the business in support of new product development an merger and acquisition activities. Draft and negotiate intellectual property terms in commercial agreements; and other matters as assigned. Capture patentable inventions through regular interaction with Research and Development teams in assigned areas. Maintenance of the company’s patent portfolio in assigned areas, including drafting and prosecution of patents in the United States and abroad and developing and executing protection strategies based on company’s business plans and competitor intelligence. Responsible for keeping abreast of and informing the company of industry patent trends and providing patent landscape analyses in support of Research and Development workstreams. Conduct freedom to operate analyses and provide strategic legal advice to minimize risks in support of new product development and mergers and acquisition activities. Work with procurement and in-house commercial legal team to negotiate and draft intellectual property terms in commercial agreements. Liaise with outside law firms, vendors, and internal business partners as needed for pending matters. Provide education and proactive counseling to Research and Development and to members of the business at large as appropriate to minimize risks and enhance patent protection. Work with Managing Counsel – Patents to support patent litigation. Other legal services as assigned. Should have Law degree, licensed to practice in one or more jurisdictions. Must have Undergraduate or graduate degree in engineering or science. Must be Admitted to practice before the United States Patent and Trademark Office. Must have 5-7 years of experience as practicing patent attorney in-house or at a law firm. Prior in-house experience preferred.

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