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Intellectual Property Attorney
Refer job# FXZC135471
Intellectual Property Attorney The candidate will be responsible for developing, managing, and executing IP strategies and render legal advice to business executives, marketing associates, and engineers with regard to the development, protection, enforcement, and avoidance of IP rights (e.g. patents, trademarks, trade secrets, etc.). Create global patent strategies for the assigned business units in cooperation with R&D, Marketing, and IP management. Train and educate colleagues on IP and the IP Department s policies and procedures. Visit R&D facilities and participating in project meetings to review R&D activity and advise R&D on IP protection and infringement avoidance. Harvest invention reports from R&D and processing them according to company s procedures. Lead regular patent review meetings for business unit managers to review new inventions, decide which inventions will be protected, review existing patent portfolios, and make decisions regarding other IP matters. Provide IP intelligence to the business in the form of patent landscape investigations, competitor watching programs, state-of-the-art investigations, etc. Perform patent and trademark clearance (i.e., freedom-to-operate) investigations and providing design-around assistance. Draft and prosecute patent, trademark, and design applications and preparing appeals, oppositions, re-examinations, etc., both in-house and through management of outside counsel. Manage outside counsel globally and working within a budget. Manage and take responsibility for a business unit s IP portfolio and docket. Support IP litigation activity for the assigned business units. Provide IP transactional support as needed, including IP due diligence and the reviewing of IP terms in development, supply, and sales agreements. Provide other IP and legal support as needed. Extensive patent law experience and at least a willingness to develop experience in trademark law and other requisite areas of IP required. Bachelor degree or equivalent in mechanical engineering, electrical engineering, computer science, physics, or a similar science or engineering discipline required. JD or equivalent law degree from an accredited law school. Must be admitted to practice law in the U.S. and before the USPTO required. 5+ years of patent law experience in a law firm or corporation required. Prior experience working with inventors and assessing the patentability of inventions required. Demonstrated experience drafting and prosecuting patent applications in the US and managing prosecution in foreign countries and through the PCT system required. Proven ability to conduct patent searches, analyze patent claim scope and assess infringement risks required. Thorough knowledge of U.S. patent and trademark laws, rules, and procedures related to filing and prosecution, but also a general knowledge of global IP norms and procedures required. Some experience with trademark matters, IP litigation, and/or IP transactional issues preferred. International experience preferred. Excellent interpersonal and communication skills and ability to interact and positively influence a broad range of technical and non-technical colleagues required.
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