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Counsel - Intellectual Property
Refer job# VPTK137345
Counsel - Intellectual Property The candidate will report to the Associate General Counsel IP Mars Wrigley Confectionery (AGC-IP)/Chief Patent Counsel. Will support various Research & Development functional groups located globally (with primary emphasis on the R&D facilities in Chicago, IL on the Goose Island Campus) in order to develop and implement new and improved products and processes to support global business initiatives. Advise various R&D functions to support both technical developments and address contract needs related to IP issues in order to deliver comprehensive IP related support to the assigned R&D group(s). Work with other members of the Confectionery global Legal Department, as well as IP members of other Mars segments, to effectively support the Confectionery business. Work with assigned R&D group and IP Team members to conduct preliminary patent searches, identify potentially patentable subject matter, draft and prosecute patent applications as well as work with outside counsel to support these activities, and perform Freedom to Operate analysis and related client counseling for assigned R&D group. Work with IP Team to provide competitive intelligence and pro-active IP strategy counseling to assigned R&D group. Directly advise assigned R&D group with respect to IP-related contracts, including for example, confidentiality, consulting and research agreements, joint development agreements, etc. Manage and provide counseling on trade secret and confidentiality-related matters for assigned R&D group. Work with other Law Department Associates to provide IP-related advice and support for transactions and client counseling. Advise regarding intellectual property aspects of licensing, M&A and commercial activities as assigned by Associate General Counsel Intellectual Property. Manage litigation-related activities as assigned by Associate General Counsel Intellectual Property. Develop and provide IP training for innovation groups and business and commercial operations as assigned. Undergraduate degree in Chemistry, Chemical Engineering, Food Science, Biology, Bio-chemistry, Mechanical Engineering or equivalent, some pre-law school technical experience preferred. JD degree is needed. Should have 5+ years of IP-related legal experience with emphasis on patent prosecution. Must have substantial experience in patent drafting, prosecution and analysis, as well as broader experience in intellectual property related transactions and litigation. Intellectual property transactional or litigation experience is a plus. Licensed to practice law in a US jurisdiction is needed. Licensed to practice before the USPTO is essential.
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