Intellectual Property Counsel The candidate role will generally provide a full range of IP counseling services to the First Quality family of companies, with specific emphasis on strategic patent development and execution, as well as risk assessment and management of complex IP legal issues. Provide a full range of senior-level counseling and expertise to a variety of businesses in the area of IP law. Develop and execute business-focused patent strategies to enhance First Quality s marketplace positions. Work with multiple Product Development groups and other business partners on the procurement of IP rights that support their development and commercial plans. Review and analyze third-party patents and prepare, or oversee the preparation of, freedom-to-operate opinions and advise the business on any associated risks. Conduct IP training for internal Product Development and business associates. Manage outside counsel activities with regard to drafting, filing and prosecuting patent applications. Prepare confidentiality agreements, joint development agreements and IP clauses contained in commercial contracts. Establish and maintain a detailed knowledge of the commercial and technology development strategies of the various First Quality businesses. Stay abreast of the patent positions being established by key competitors.
The candidate should have 10 years experience working on a wide range of IP legal matters in a law firm or corporate setting, including patent preparation and prosecution, opinion work, agreement work and handling trade secret matters. Some exposure to IP litigation a plus. J.D. degree, a member in good standing of at least one state Bar and registered to practice before the USPTO. An undergraduate degree in engineering, chemistry or similar discipline is required. Must be business-focused individual with a track record of creating and adding value through the development and execution of strategic IP initiatives. Must possess exceptional interpersonal, problem solving and work-load management skills, along with the ability to manage multiple tasks in a fast pace environment and consistently meet deadlines.
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