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Years of Experience
Date Last Verified
Senior Counsel - Intellectual Property, Licensing The candidate will provide legal support for patent and technology licensing programs at company (from mining and early development to negotiation and closure), as well as manage patent prosecution of various licensing programs within company. Will leverage advocacy experience to persuasively present before third parties and senior executives and to work collaboratively across internal teams and with company businesses to resolve legal and intellectual property issues. Provide legal support for technology transfer, joint development, and IP licensing programs, including identifying relevant IP portfolios, developing IP and technology programs, asserting IP, negotiating transactions, drafting IP or technology licenses, and facilitating IP sales, acquisitions, and investments. Manage worldwide patent prosecution for various industrial technologies, as well as strategically develop and deploy IP portfolios. Collaborate with and supervise outside counsel to enforce and produce high quality IP in a timely fashion. Counsel business executives on protecting technology and IP and on legal impact of business decisions or actions. Counsel business on protecting IP assets. Support technology transfer, joint development and IP licensing programs. Draft, review and help negotiate agreements.
Qualification and Experience
The candidate should have a Bachelor's degree from an accredited college or university. Master's degree and/or Ph.D. in electrical engineering or physics is preferred. Registration to practice before the USPTO is required. Must have a J.D. degree with 10+ years of patent litigation and/or licensing experience in industrial technical areas and markets including experience in drafting technology transfer and patent licensing agreements. Should be licensed and in good standing to practice law in a state or territory of the US. Demonstrated experience with patent portfolio management is desired. Experience with risk assessment, validity/invalidity, and patentability opinion work is an asset. International patent prosecution experience is a plus. Should have extensive knowledge of laws, rules, regulations and practice in major national and regional patent systems, treaties and conventions. Must have ability and willingness to travel a minimum of 25%.
Ref. #: 3104181
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