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Melinda Burrows
Deputy General Counsel
- Litigation and
Compliance, Progress
Energy Service Company
LLC
 

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Corporate Counsel
Refer job# KWBV136535
 
Corporate Counsel The candidate will provide expert advice and counsel on technology agreement negotiation and drafting, patents, trade secrets and related intellectual property issues to multiple research and development groups, and assistance with intellectual property issues in connection with private and government contracts and global markets. Will report to the Associate General Counsel for Intellectual Property and can be based out of our Cleveland, OH or Minneapolis, MN facility. Provide legal advice and services to research and development and product innovation teams, and provide counsel on contracts for private and government-sponsored research, and external technologies. Require substantial knowledge of negotiation and drafting of technology agreements in industrial and consumer businesses, detailed knowledge of coatings and polymer chemistry, substantial experience in chemical patent law and advanced chemical and material technologies, and the proven ability to efficiently communicate and work with Ph.D. level chemists and chemical engineers. Creative negotiation, drafting and managing of intellectual property agreements including non-disclosure and confidentiality agreements, joint development agreements, government-sponsored research and consulting agreements, technology licenses, distributorship agreements. Collaboration with scientists, engineers and researchers and technical directors regarding new products, product innovation and improvements. Assistance with and review of invention disclosures, research activities and new product innovation. Draft, file and prosecution of patent applications, U.S. and foreign. Evaluation of intellectual property and developing protection strategies. Patent research and mapping, freedom-to-practice analysis and opinions. IP due diligence for mergers and acquisitions. Patent and trade secret dispute and litigation support. Trade secret identification, documentation and protection. Development and execution of intellectual property protection strategies and related risk management. Interaction with and management of outside counsel, U.S. and foreign. IP legal assistance, training and support for marketing, sales, general legal and technology personnel and departments. Support projects and teams - Supports or leads projects and teams providing legal support and solutions to the company's business units or corporate departments. Provide focused and practical legal advice respecting business operations as well as the impact of current or anticipated laws, rules and regulations. Research, develop and coordinate implementation of legal solutions. Identify and analyzes existing and emerging legal risks. Develop and implements business-focused strategies to manage risks. Assist the development and implementation of policies, procedures and control mechanisms to promote compliance with applicable laws, rules and regulations. Stay abreast of new regulations and emerging legal risks; provides proactive advice and counsel to business units and corporate functions that may be impacted. Develop understanding of the operational model by which the supported business unit or enterprise-wide function operates. Support clients on a cost-effective basis. Manage outside counsel in an efficient and cost effective manner, as necessary.

The candidate should have JD degree. License to practice law required (applicable jurisdiction) is essential. Excellent academic credentials including bachelor of science or advanced degrees in chemistry or chemical engineering is advantageous. Bar admission in Ohio or Minnesota OR eligibility to be licensed in Ohio or Minnesota is needed. Registered to practice before the U.S. Patent and Trademark Office is essential. Should have 5+ years of legal experience. High level of proficiency with business software and databases is needed. Extensive experience with coatings and polymer technologise are preferred. Experience and knowledge of all aspects of intellectual property with specialization in patents and trade secrets and sub-specialization in chemical technology is needed. Experience in negotiation and drafting of technology and product development agreements, preferably including experience with large commercial product manufacturers and consumer products is needed. Extensive experience in managing a high volume of intellectual property matter is essential. Extensive knowledge of related areas of IP law and business law fundamental is essential.
 
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This particular job is currently not active. However, since our clients regularly share with us similar and other job openings, we strongly recommend that you submit your resume. We shall review your resume and get in touch with you as soon as a suitable vacancy comes up to further discuss your interest in exploring the opportunity. Assisting you is our highest priority.

Please be assured that none of your materials will be forwarded to any employer without your consent. Of course, all inquiries are kept strictly confidential.
 
 

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