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Intellectual Property Counsel
Refer job# CYWP137000
 
Intellectual Property Counsel The candidate will report to the Managing Intellectual Property Counsel for Completions, Wellbore Interventions and Artificial Lift. Will primarily oversee and manage the global IP Portfolio for the Wellbore Interventions (WBI) product line as well as other related technology areas as assigned. Provide advice and counseling on intellectual property legal matters which will have financial and strategic impact on business activities and operations. Handle a caseload of files and issues which requires in-depth technical and legal expertise (i.e. mechanical and/or materials undergraduate education as well as a law degree). Supervise secondary legal professionals such as a paralegal, and will be required to collaborate at a high level with other legal and technology professionals and executives. Manage intellectual property legal services in support of the WBI and Completions product lines as well as other related technology areas as assigned. Managing an international patent portfolio including oversight and management of the filing, prosecuting, and maintenance of patent applications worldwide. Working independently with the clients to assure registrations are obtained in strategic areas, and overseeing all post registration actions. Assisting in developing global IP protection strategies; and providing related legal counseling to world class scientists and corporate management staff regarding intellectual property matters. Addressing intellectual property litigation issues for the assigned businesses. Drafting, negotiating, and enforcing license agreements, joint development agreements, and related transactional activities. Assisting in the acquisition and divestiture of intellectual property rights when appropriate. Reviewing third party patents, providing clearance, validity and infringement opinions to management and assisting in the development of strategic patenting opportunities for the client. Handling trademark registration and assertion issues as required. Perform additional duties as necessary or requested.

The candidate must have a Bachelor's and a Law degree including a JD from an ABA accredited law school. Must be licensed to practice law in at least one state, preferably Texas. Should be licensed to practice before the U.S. Patent and Trademark office. Should have 5+ years patent and trademark prosecution experience. Should have some level of PQE of IP transactions and litigation. Must preferably have educational backgrounds in Mechanical Engineering or Physics. Knowledge and experience with managing an assigned intellectual property portfolio including patents, trademarks, copyrights, and trade secrets is required. Knowledge and experience with managing the preparation and prosecution of domestic and foreign patent and trademark applications is needed.
 
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