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Intellectual Property Attorney
Refer job# QEYH137941
 
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. Will 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. Develop, draft, and negotiate contractual/licensing terms and conditions. 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. JD degree or LL.M. from ABA accredited law school is needed. Admittance and licensed in good standing before California State Bar or other state bar and registered to practice before the USPTO in patent matters are essential. Should have 5-7 years of relevant legal experience in a private practice law firm or in-house counsel position. Expertise in commercial software licensing T&Cs is needed. Solid business acumen and judgment, attention to detail, and the ability to isolate issues for escalation is needed. 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 is must. Domestic and international distribution and software licensing experience is needed. Familiarity with antitrust, export control, M&A, and managing litigation support efforts are needed.
 
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