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Melinda Burrows
Deputy General Counsel
- Litigation and
Compliance, Progress
Energy Service Company
LLC

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Counsel Jobs > Corporate Counsel - Intellectual Property Job in North Carolina > Corporate Counsel - Intellectual Property

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Corporate Counsel - Intellectual Property

Refer job# OOEA139734

Corporate Counsel - Intellectual Property The candidate will report to the Vice President, Chief IP Counsel and Deputy General Counsel, where the primary responsibilities of the role are to direct intellectual property matters, transactional and business matters involving technology and innovation. Will portfolio development, functional excellence initiatives, and the coordination and alignment of IP Strategies. Invention capture and review process, and develop high-value assets that, as defined by the Chief IP Counsel, are of quantity and quality in alignment with portfolio management and strategy objectives. IP litigation and support, including management of litigation strategies and outside counsel. Manage intellectual property transactional matters for the business area(s) assigned, including technology licensing in to the Enterprise, out to other entities. Assist in the development of strategies and technology roadmaps for the assigned business area(s) with attention to IP metrics and achieve performance results required. Prepare, prosecute, and develop associated portfolios of strategic, high quality patent applications protecting IR's products, services, and strategic innovation objectives, as assigned. Provide focused legal advice and guidance on technology, IP and innovation matters involving contracts, joint development agreements, non-disclosure agreements, strategic alliances, international IP development and commercialization issues, competitive technology, America Invents Act, and the like. Provide trademark and copyright oversight and training, including clearance and registration of trademarks, global enforcement, DMCA takedown notices, and domain name support. Active participation in creating dynamic and effective integrated technical teams for projects, individual inventive initiatives and innovation activities. Support educational sessions, invention creation initiatives and attend to all details in the preparation and prosecution efforts, IP transactions, and activities as assigned. Successfully enact developed strategies in the business by identifying, harvesting and protecting important inventions that are in alignment with strategic initiatives. Support IP clearances, Innovation On-Demand projects, IP risk issues, IP strategies, competitive IP assessment analysis, 3rd party technology opportunities and partner/supplier assessment. Provide creative approaches to innovation leaders and technologists in leveraging technology, charting next generation technologies, and identifying opportunities to improve competitive advantage through IP opportunities. Facilitate portfolio developments, annual reviews, incentive programs, and optimized maintenance processes. Facilitate the development of a world class IP department, including advising and mentoring various IP counsel, oversight of administrative personnel, support of IP portal, and management of an appropriate IP budget including outside counsel billing and oversight. Must possess a BS in a technical degree, or equivalent, in Mechanical, Chemical, Computer and/or Electrical engineering, with demonstrable technical achievement. Master s degree, or equivalent, preferred and have prior experience involving IP strategy and/or licensing is needed. Should possess an accredited JD degree with an emphasis in IP; active admissions to the USPTO and at least one state Bar. Should have 7-10 years of combined technical/legal experience, including 2 years patent/IP preparation, prosecution, portfolio management experience particularly in inventor-facing and strategy-oriented aspects involving technology roadmaps, competitive IP assessment, invention development, state of art/field analytics, and reverse engineering; 1 year direct involvement in IP clearance/opinion, freedom-to-operate processes, competitive claim assessment, design-around activities, and patent ability review committee leadership with business impact; 1 year advising on and attending to contracts, licensing, technology agreements, etc.; and 2 years as an engineer or technologist preferably in a diversified, global manufacturing environment. Must have proven successes in developing valuable IP and IP portfolios involving complex technologies resulting in measurable business growth and impact, preferably in a competitive six sigma/lean environment. Must have working knowledge of the America Invents Act, PCT processes, foreign filing strategies, and litigation awareness is needed. Must be able to identify, lead, and support appropriate tasks, strategies and implementations in leveraging our IP Team s efforts for competitive IP business advantage. Should have proven successes in communicating complex issues in an understandable manner with executives, business and technical leaders, and legal service providers. Familiarity with technologies relating to firm Rand is a plus. Foreign language capability is a plus. Inventive experience as a patent holder is highly desired.

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