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Intellectual Property Counsel
Refer job# DQXM141296
 
Intellectual Property Counsel Duties: Acquires in-depth knowledge of firm s products and technologies and gains familiarity with relevant products and technologies of firm s customers, suppliers, and competitors, Provides landscape analyses and related support for R&D efforts to ensure freedom to operate and minimize exposure infringement upon third party IP, 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. Manages the company s patent and trademark registration efforts, including overseeing outside counsel s drafting and prosecution of patent and trademark applications through issuance, worldwide, Protects the intellectual property of firm, including but not limited to instituting defensive measures and aggressively identifying and pursuing infringers of firm s IP, Monitors third party patent activity in relevant areas, Provides strategic IP support related to M&A transactions including IP reviews of potential acquisition and IP portfolio integration, Develops intellectual property policy and procedure, and train internal customers on process and related risk management, Drafts/reviews and provides input on a range of commercial agreements implicating intellectual property rights, including third party supply contracts, technology development agreements, confidentiality agreements, team member obligations related to Company intellectual property and other agreements which include intellectual property considerations. Assists in a wide range of other intellectual property issues, including copyright, trademark, and trade secret matters.

Qualification: Must have 7+ years of experience of legal work as an intellectual property attorney at an outside firm or as in-house counsel. Should preferably have 10+ years of experience of legal work as an intellectual property attorney at an outside firm or as in-house counsel. Experience in manufacturing, engineering, and/ or plastics are a plus. Should have ability to provide practical and accurate advice to internal clients related to business objectives and take an active role in driving projects to final result. Must have experience with US and European post-grant patent office proceedings. Should have experience with global patent filing strategies. Should have JD Degree from an accredited law school and licensed to practice law in one state in the United States.
 
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