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Counsel Jobs > E&I Senior, Intellectual Property Counsel Job in Delaware > E&I Senior, Intellectual Property Counsel

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E&I Senior, Intellectual Property Counsel

Refer job# KOEA142331

E&I Senior, Intellectual Property Counsel Duties: Drafts and prosecutes patent applications in support of intellectual property strategies; helps identify patents that the company can or should seek based on business, research and intellectual property strategies; partners with business and research to integrate intellectual property strategies. Assists in negotiating and drafting joint development agreements and agreements relating to licensing of products and technology. Conducts intellectual property-related due diligence and risk assessment in connection with new products or technologies, acquisitions and other corporate transactions, assists in developing and nurturing the organizational partnership between legal and business units, including innovation promotion and training programs; advises on potential opportunities to enforce intellectual property rights. Works with an international team of in-house intellectual property and business lawyers, and with outside intellectual property counsel as needed, provides general strategic intellectual property advice to the supported organizations, and assists in formulating an optimal intellectual property strategy in the context of the supported organizations overall strategy, threats and opportunities. Counsels business on intellectual property matters, provides overall direction and management for intellectual property strategies including technology licensing, research collaborations and mergers & acquisitions in collaboration with other Intellectual Property and Commercial counsel, both internal and external. Manages and controls outside counsel costs. Works closely with internal R&D and Business clients to offer advice and counsel regarding a variety of intellectual property issues, including the creation and protection of intellectual property arising from the companys in-house research efforts and/or acquisitions and licensing activities. Provides legal advice for licensing intellectual property, freedom to operate, and analysis of industry Intellectual Property assets. Partners with research and business teams to develop, maintain, and implement intellectual property strategies. Interviews inventors to proactively identify patentable intellectual property. Helps identify patents the company can or should seek based on business and intellectual property strategies. Proactively works with business and marketing personnel to identify important current or future technologies and strategic applications. Directs invention disclosure review process and disclosure review meetings to ensure that the best inventions are identified and patented. Prepares and prosecutes patent applications and provides advice and guidance to patent agents in supported areas and critically reviews materials prepared by outside counsel to assure that it meets Pioneers standards of quality, timeliness and cost. Participates as a member of a cross-functional team to provide support and establish best practices in patent application drafting and prosecution, licensing, and other intellectual property matters. As a member of key business and research teams, develops negotiating strategies for joint development agreements, technology licenses, research collaborations or other intellectual property transactions and supports negotiations and drafting of these transactions. As a member of business intellectual property team, aids in the development, implementation and support of the business intellectual property strategy for certain products and technologies, and manages patent challenges by opposition, reexamination, inter partes review, revocation, or similar contested patent office proceedings, all to advance business goals. Qualifications: JD Degree. License to practice law and registration to practice before the U.S. Patent and Trademark Office. 5-7 years diverse experience in the field of intellectual property law, including experience in patent drafting and prosecution, patent opinions, technology agreements, and transactions having an intellectual property focus. Undergraduate (or advanced) degree in Chemistry, Chemical Engineering or Material Science. Master's or Ph.D. degree in Chemistry, Chemical Engineering or Material Science preferred Experience with intellectual property matters relating to materials and processes used in the electronics industry, such as lithography, polymer chemistry, metal plating, and inorganic materials is a plus Experience negotiating and drafting joint development and technology licensing agreements. Experience in multinational/international company environment.

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