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Years of Experience
Date Last Verified
Intellectual Property Counsel The candidate will be responsible to meet the IP needs of the business by providing a full range of IP services and counseling to assigned business clients, and building and maintaining a portfolio of patents and other IP that advance the technical and commercial interests of the company. Will have responsibility for strategy, planning, development, enforcement and ongoing management of Starkeyâ€™s intellectual property portfolio, with a focus on patents but also including trademarks, trade secrets and copyrights, to ensure that the portfolio efficiently and effectively supports the companyâ€™s long-term business strategy. Manage domestic and foreign patent applications of business, including managing outside counsel for the preparation and filing of new patent applications and continuation application decisions. Works closely with research and development teams to identify new inventions and encourage submissions of invention disclosures. Manages invention disclosure reviews and filing determinations. Manages IP (patent and trademark) budget of company. Manages international trademark portfolio of company. Provides initial trademark searches and clearance work, and manages trademark enforcement. Develops worldwide filing and prosecution strategy for patent applications. Maximizes IP return on investment for IP assets, including breadth and diversity of coverage, consideration of third party design-around possibilities and license opportunities. Undertakes various risk assessment studies relating to intellectual property aspects of business activities, new product plans, and commercial and technical strategies. Directs and evaluates freedom-to-operate studies. Analyzes third party patents and patent applications. Works with outside counsel to obtain infringement and validity opinions as necessary. Provides counseling and training on IP issues. Advises R&D on IP strategy for research programs and product candidates. Educates R&D and product management personnel on IP topics. Provides litigation, agreement, and other transactional support. Carries out transactional activities as assigned including drafting and negotiation of joint development agreements, sponsored research agreements, license agreements, valuation agreements, and/or IP related supply agreements. Works with in-house corporate attorneys on IP aspects of agreements. Supports patent assertion, challenges and litigation efforts as appropriate. Manages team of IP Coordinator and Patent Manager.
Qualification and Experience
The candidate should have Bachelor's degree in electrical engineering, mechanical engineering or physics. Must have Juris doctorate degree from an accredited law school. Must have USPTO registration. Must have 5+ Years of Related Experience as licensed lawyer in a law firm or legal department. Preferably some in-house experience. Must be Admitted to a US state bar in good standing. Must have 5+ years of patent law experience including preparation and prosecution. Thorough knowledge of business and planning processes required. Knowledge of circuitry and circuit design is required.
Req Id 27431.
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