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General Counsel Consulting

General Counsel
Consulting
provided
exceptional
service in helping
my organization
recruit for a hard
to fill position.
They did extensive
work on the front
end to understand
our needs and
our culture and
began referring
highly qualified
candidates almost
immediately.

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

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Counsel Jobs > Intellectual Property Associate Counsel Job in Ohio > Intellectual Property Associate Counsel

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YOUR WINDOW TO A WORLD OF OPPORTUNITIES

Intellectual Property Associate Counsel

Refer job# QHTZ140806

Intellectual Property Associate Counsel Duties: Prepares, files, and prosecutes patent and trademark applications in the United States and coordinates with foreign counsel to file and prosecute the same outside the United States Drafts, negotiates, and advises on IP-related agreements and agreements containing IP provisions, including confidentiality agreements, development agreements, services agreements, license agreements, supply agreements, etc. Counsels internal clients regarding a full range of IP issues, including patentability, product clearance / freedom-to-practice, protection and use of trade secrets and confidential information, trademark protection and clearance, copyright protection and use, etc. Conducts patent and trademark searches, analyzes the search results, and effectively communicates relevant advice or information to internal clients Supports IP-related aspects of M&A activities as assigned Supports aspects of IP-related litigation, IP-based oppositions, and other disputes as assigned Develops and delivers IP-related training to internal clients as assigned Acquires in-depth knowledge of PolyOne s products and technologies and gains familiarity with relevant products and technologies of PolyOne s customers, suppliers, and competitors Works collaboratively with existing IP team, other attorneys and staff within the Legal department, and individuals throughout the global organization from functions including Technology, Marketing, Product Management, Sales, Sourcing, Global Trade, Mergers & Acquisitions, Tax, Finance, etc. Performs special projects/duties as assigned. Qualifications: JD Degree from ABA accredited Law School. Bachelor and/or advanced degree(s) in Chemistry, Chemical Engineering, Materials Science, Polymer Science, or similar fields. Licensed to practice law in the State of Ohio (or another state and qualified for corporate counsel registration in Ohio). Registered to practice before the United States Patent and Trademark Office. 5+ years of intellectual property legal experience, including a balance of patent preparation and prosecution for chemical technologies, IP-related agreements and transactions, and IP-related counseling and opinions. Demonstrated knowledge of or familiarity with all aspects of intellectual property law with a focus in and substantial experience with patents, trade secrets, and confidential information; at least some experience with trademarks is preferred. Demonstrated knowledge of and experience with the Patent Cooperation Treaty and familiarity with patent practice and procedure in Europe (EPO) and China (SIPO). Experience with polymer technologies is preferred. Experience with a global, publicly-traded organization is preferred. Strong legal, business, and technical acumen. Detail-oriented, motivated, confident, and approachable. Excellent written and oral communication skills, including the ability to interface and communicate effectively at all levels of the organization. Excellent business judgment, problem solving, negotiation, follow-through, and time management (including docket management) skills. Excellent analytical skills, including an ability to review technical information and data to identify patentable subject matter. Exceptional document drafting skills (candidate should be prepared upon request to provide a writing sample including at least one published patent application and at least one publicly available office action response that were principally authored by the candidate) . Ability to provide timely and pragmatic legal advice that guides the business to successful outcomes. Ability to quickly learn and comprehend complex technical subject matter. Ability to function autonomously while possessing sufficient judgment to understand when to seek assistance from or provide updates to management and/or stakeholders. Ability to function in a fast-paced environment and operate efficiently and effectively to manage time pressures and meet deadlines. Ability to take on progressively greater responsibilities. Awareness of cultural differences between the United States and other countries; familiarity with a language other than English is a plus.

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