Senior Intellectual Property Counsel The candidate will provide business and IP/legal advice to a >$1B global business. Will analyze IP landscapes, perform IP risk assessments and develop IP sustainability strategies. Actively develop and manage a global patent portfolio to protect key differentiating aspects of Firm s technologies. Review, draft and negotiate a broad range of IP related agreements, including non-disclosure agreements, joint development agreements, sponsored research agreements and government funding agreements. Provide advice on various IP matters involving patents, trade secrets, copyrights and trademarks. Lead and contribute to the development of business processes and policies to better enable achievement of business objectives, mitigate risk, reduce inefficiencies and improve effectiveness. Collaborate with Litigation team regarding IP procurement and enforcement strategies and best known methods. Provide training and develop programs to protect IP and accomplish business goals. Perform general legal research and due diligence in connection with the above. Manage outside counsel and related budgets.
The candidate should have Juris Doctorate (JD) degree or LLB from accredited and recognized law school. Should have B.S. in Engineering, Physics, Chemistry or Materials Science. Should have 6-10 years of legal experience with a focus in the following areas: IP landscapes, IP risk assessments and IP sustainability strategies, especially for growth opportunities; Patent portfolio development and management; Agreements involving IP provisions, including JDAs and research agreements. Experience in: IP law in Asian countries, including China and Korea; Licensing and Commercial transactions. Excellent negotiation skills including first-hand experience of leading negotiations with parties across multiple jurisdictions is desired. Work experience in law firm and/or in-house legal departments of multinational corporations is essential. Excellent collaboration and communication skill is essential. Bar Admissions: U.S. and USPTO is essential. Strong intellectual capacity and high personal standards of excellence is preferred. Strong business and technology acumen; capacity to learn the business and technology quickly is preferred. Understand how to translate business needs into contract language and creatively resolve business issues is preferred. Strong customer focus, both internal and external
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