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Energy Service Company

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Intellectual Property Counsel
Refer job# AHBE136746
Intellectual Property Counsel The candidate will collaborate with R&D and business unit clients to timely identify all agreements necessary to implement their respective objectives. Will advise R&D and business unit clients on IP contract issues and interpretation. Conduct IP due diligence for M&A transactions. Review, negotiate, and draft a broad range of contracts such as: Confidentiality agreements with universities, research organizations, commercial partners and private sector institutions to implement long-term strategic and commercial objectives for the subject IP; material transfer agreements covering early-stage, proprietary chemistry and/or biotechnology materials and/or products; joint development agreements and other collaborative agreements; service agreements; consultant agreements; license agreements, including complex, cross-border in- and out-license agreements, cross-license agreements, development license agreements, and license and supply agreements; technology transfer agreements; IP asset acquisition agreements; and IP asset divestiture agreements. Advise on patentability, validity, and infringement. Serve as senior IP advisor to your assigned R&D and business unit clients. Manage patent portfolios. Develop and implement patent strategies to protect innovations. Conduct freedom-to-operate assessments. Effectively communicate with people at all levels of the Company, including communicating complicated technical and legal issues to non-technical personnel, to enable critical decisions on IP and IP litigation matters. Work closely with other members of the IP, Legal and other functions, e.g., Tax, Insurance and HR, on regional and global levels. Provide IP litigation support, working in conjunction with the firm s US litigation attorneys and global IP team. Conduct and/or coordinate IP training, working in conjunction with the firm s US commercial attorneys and global IP teams. Employ deft social skills to mediate between, and balance, occasional competing business units interests. Should have higher education from an accredited institute. A JD degree and a license to practice law in at least one US state is required. Admission to practice before the USPTO is required. Should have 8+ years of IP practice. In-house counsel experience is preferred. Experience in one or more fields of lubricant oil additives, compounded lubricants, plastic additives, water treatment chemicals, paper chemicals, kaolin processing and applications, and personal care is preferred.
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