Job Details

Computer Engineering Attorney / Computer Science Attorney / Electrical Engineering Attorney in Chicago, IL

Organization Type

In-House

Job Type

Attorney

Date Last Verified

Oct 22, 2020

Posted on

Oct 18, 2020

Years of Experience

Min 7 yrs required

Location

Chicago, IL, United States
Practice Area
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Hard Sciences >> Computer Engineering
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Hard Sciences >> Computer Science
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Hard Sciences >> Electrical Engineering
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Senior Intellectual Property Counsel
Duties: Embeds with the business to gain a deep understanding of key assets and develop comprehensive IP protection strategies, including evaluating assets for patent-protection. Leads patenting efforts for specific Accenture business groups by identifying strategic focus areas, mining and harvesting innovations, evaluating the patentability of such innovations, and setting global patent filing strategies. Strategically manages patent portfolios for specific Accenture business groups. Develops effective strategies for patenting business process and software inventions. Manages outside counsel in effectively drafting and prosecuting patents, including reviewing and approving their work related to drafting patent applications, amendments, appeals and other responses to Office Actions. Delivers against goals and objectives related to Accenture’s broader patent strategy. Counsels and forges solid and trusting relationships with inventors and business leaders and finds strategic ways to patent and leverage patented assets. Educates and trains business teams on intellectual property topics. Takes on additional roles on a strategic basis relating to invention mining and harvesting. Assists where necessary on the management of operations relating to the patent portfolio. Assists with developing and formalizing patent-related processes and templates.

Qualification and Experience

Qualifications: JD Degree (or local equivalent). Undergraduate degree or comparable education in electrical or computer engineering, computer science preferred. 7+ years of hands on experience practicing patent law and prosecuting or managing the prosecution of patents globally. Licensed member of a Bar (for U.S.-licensed attorneys). Admission to practice before the U.S. Patent and Trademark Office or European Patent Office. Preferred: Significant and demonstrable experience managing invention mining, harvesting, and patenting efforts in-house or as outside patent counsel. Significant experience building relationships with inventors and business executives. Proactive, organized, and self-motivated and works well in a fast-paced global environment. Commitment to collaboration. Skilled in anticipating obstacles and developing innovative solutions in alignment with business strategy. Analytical skills, business acumen, and ability to bridge the legal and business aspects of intellectual property law. Superior knowledge and experience in invention mining, harvesting and patent prosecution. Excellent oral and written communication and presentation skills. Ability to build relationships and inspire. Ability to meet and exceed reasonable and clear metrics. Executive presence and the ability to influence significant decisions. Excellent judgment; capable of making executive-level decisions. Experience with IP transactional, licensing, litigation and/or acquisition-related activities preferred. Ability to manage many complex projects successfully, and set and meet priorities. Experience performing detailed competitive analyses using global patent data is a plus. Demonstrated leadership in professional setting; either military or civilian. Demonstrated teamwork and collaboration in a professional setting; either military or civilian.

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