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Intellectual Property Attorney
Refer job# UVYC136836
 
Intellectual Property Attorney The candidate will provide legal counsel, guidance, and support, primarily in the area of patent law and secondarily in the areas of intellectual property law (e.g., trademarks, copyrights, and trade secrets) and complex IP licensing arrangements; Assist technical and business teams by answering patentability questions, securing invention disclosures, assisting with inventor interviews, assisting in the drafting of provisional patent applications, assisting outside patent counsel with patent prosecution, assisting in patent infringement matters and prior art research, preparing freedom to operate analysis reading documentation, and providing risk assessment and conflict resolution; Assist with IP due diligence review for mergers and acquisitions. Will develop, draft, and negotiate contractual/licensing terms and conditions. Will handle OSS/FOSS licensing review and third-party acknowledgement; Maintain agreements and contractual relationships for software licensing and development with business partners and other strategic business relationships

The candidate should have 5-7 years of relevant legal experience in a private practice law firm or in-house counsel position. Should be expertise in commercial software licensing T&Cs; Admittance and licensed in good standing before California State Bar or other state bar and registered to practice before the USPTO in patent matters; Solid business acumen and judgment, attention to detail, and the ability to isolate issues for escalation. Should have strong written and verbal communication skills for working with all levels of management and staff in a variety of Esri departments and with third-party vendors and licensees . Should have JD degree or LLM from ABA accredited law school. Should have domestic and international distribution and software licensing experience ; Familiarity with antitrust, export control, M&A, and managing litigation support efforts ; Critical thinking and creative problem-solving skills as well as the ability to manage multiple projects with various clients at the same time. Should have familiarity with antitrust, export control, M&A, and managing litigation support efforts.
 
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