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Senior Intellectual Property Counsel
Refer job# QVUS139351
 
Senior Intellectual Property Counsel Duties: Provides expert legal counsel and legal services for State Street s global operations and business activities including the Global Technology Services team including by advising on and managing State Street s global intellectual property assets. May have a role in a wide variety of matters including: Advising and providing strategic insight on the management and protection of global portfolio of intellectual property assets (e.g. trademarks patents trade secrets copyright and know-how and any related registration) including related standards and best practices. Advising regarding and conducting due diligence with respect to licensing and technology matters (including open source issues) and relationships including in connection with strategic alliances M&A activity and other strategic initiatives across global operations. Advising on intellectual property disputes litigation and the enforcement of intellectual property rights. Counseling on the legal issues and related processes associated with outsourcing consulting licensing hosting and other third party engagements including negotiation of contracts providing guidance on disputes and monitoring of third party performance participation in risk analysis advising on process issues and documentation related thereto; and integration of policy and practice objectives of other corporate divisions (e.g. corporate information security and privacy). Monitoring and identifying regulatory risks and issues and assisting with the development of solutions to minimize corporate exposure. Managing and monitoring outsourced legal processes.

The candidate will possess the following qualifications and skills: Significant subject matter expertise and experience in technology and intellectual property matters including trademarks patents trade secrets copyright and know how; Substantial experience and responsibility in contractual negotiations over a wide variety of technology IP licensing service provider and other matters; Subject matter expertise in outsourcing strategic relationships data protection and other information security matters; Superior communication client service drafting and writing skills attention and fiduciary sensibility; Experience with managing staff and service providers; Experience and ability to excel individually and collaboratively in a multi-disciplinary highly regulated environment communicating with various levels in a large global firm; 9+ years of related work experience;; and JD Degree and bar admission.
 
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