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

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Counsel Jobs > Lead Intellectual Property Counsel Job in Massachusetts > Lead Intellectual Property Counsel

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YOUR WINDOW TO A WORLD OF OPPORTUNITIES

Lead Intellectual Property Counsel

Refer job# DEFX142250

Lead Intellectual Property Counsel The candidate will be responsible for supporting and, where appropriate, driving the global IP strategy for a portion of firms Life Sciences business. Reporting to a more senior firm IP Counsel, this role will provide an opportunity to work with a cross-functional team on specific aspects of IP strategy across firm Life Sciences, including general IP counseling, idea generation through patent filing, prosecution, maintenance as well as licensing and enforcement. Works closely with product development teams to ensure that sufficient ideas and Invention Disclosures are generated. Ensures that patent filings are of high quality on commercially significant inventions by working with R&D, business managers and marketing. Prepares high quality patent applications, efficiently advances prosecution of pending patent applications, and manages global patent portfolio to ensure that meaningful protection is obtained. Works closely with product development teams to develop IP strategies using various types of IP to develop meaningful IP assets. Provides deep patent analysis expertise to support business development, licensing, and freedom to practice analyses. Drafts and negotiates IP-related agreements as well as IP specific terms in other agreements. Work closely with other lawyers in addressing mixed intellectual property/general legal issues. Provide leadership and legal advice as a member of multi-functional teams. Uses a range of tools and data sources to understand the internal and external IP environment. Develops and conducts auditing procedures for compliance with open source guidelines and protection of trade secrets, including creation and delivery of related training materials. Collaborate with regional legal colleagues and subject matters experts to advise the business on complex IP/legal issues that arise out ofs global operations. Must have JD (or global equivalent) and member of good standing of the bar of any state preferred; however, highly qualified patent agents will be considered. Registered to practice before the U.S. Patent and Trademark Office. Should have 3+ years of experience as a practicing patent attorney. Knowledge of laws, regulations, practices and procedures relating to patent procurement and/or IP licensing in US, Europe and Asia desired. Previous experience related to handling IP-related issues arising in technology transactions, IP litigation, M&A transactions, or IP monetization activities preferred. Technical background in electrical, chemical or mechanical engineering, physics or equivalent, with experience working in the healthcare field desired.

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