Job Details

Computer Science Attorney / Electrical Engineering Attorney / Physics Attorney in Houston TX

Organization Type

In-House

Job Type

Attorney

Posted on

Sep 10,2019

Years of Experience

5-10 yrs required

Location

Houston, TX, United States
Practice Area
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Hard Sciences >> Computer Science
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Hard Sciences >> Electrical Engineering
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Hard Sciences >> Physics
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IP Transactions Attorney
The candidate will report to the Director, Intellectual Property Transactions & Counseling. Will provide IP transactional support to business unit clients, global functions including supply chain, and to the IP Sales and Licensing team. Support special projects as needed. Provide business-focused IP solutions to all levels of management within the supported client group. Handle complex IP and technology transactions such as joint development agreements, licensing agreements, patent sales and licensing, patent pool and standards agreements, university collaboration agreements, NDAs and other IP agreements. Responsibilities include agreement drafting, negotiation, and encumbrance review. Will perform infringement and evidence of use analysis and prepare, present and defend claim charts. Communicate company's IP strategy effectively at all levels within company's organization and prevent loss of IP value by obtaining the best possible IP terms for company in a wide range of transactions. Advise clients on legal risks in a compressed-timeline, business-critical deal environment. Prepare and review submissions to company's IP Approval Board for escalation, review and approve non-standard IP terms, review company's participation in standards setting organizations and patent pools and work on other non-product related IP out-licensing.

Qualification and Experience

The candidate should have a J.D. degree and Bar qualification. USPTO / EPO / JPO admission (or equivalent) is required. Must have 5-10 years of proven experience and success in providing intellectual property transactional counseling in a high technology environment, including experience providing legal support for standards and patent monetization activities. Strong understanding of intellectual property law required. Appropriate technical degree (EE, CS, Physics or equivalent) required. Industry knowledge in appropriate technology fields (server, storage, cloud, networking, IoT, services, hardware and software) is desired. Some travel may be required.

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