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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 Counsel - (B5) Job in California > Intellectual Property Counsel - (B5)

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YOUR WINDOW TO A WORLD OF OPPORTUNITIES

Intellectual Property Counsel - (B5)

Refer job# PJZN142538

Intellectual Property Counsel - (B5) Responsibilities: Provide business and IP/legal advice to a >$1B global business. Counsel management and technologists of client business groups on IP matters involving patents, trade secrets, trademarks and copyrights. Analyze IP landscapes, perform IP risk assessments and develop IP sustainability strategies. Actively develop and manage a global patent portfolio to protect key differentiating aspects of Applieds technologies, including managing outside counsel on patent drafting and prosecution, improving quality, scope and litigability of patent applications and claims, and tracking patent budget and spending. Review, draft and negotiate a broad range of IP related agreements, including non-disclosure agreements, joint development agreements, sponsored research agreements and government funding agreements. Lead and contribute to the development of business processes and policies to better enable achievement of business objectives, mitigate risk, reduce inefficiencies and improve effectiveness. Collaborate with Litigation team regarding IP procurement and enforcement strategies. Develop programs to protect IP and accomplish business goals; provide training to management and engineering teams. Qualifications: JD Degree from accredited law school. Bar Admissions: U.S. (CA or other state) and USPTO Registration Numbers. B.S. in Engineering, Physics, Chemistry or Materials Science. 5+ years of legal experience in law firm and/or in-house legal departments with a focus in the following areas: Patent portfolio development and management in the US and foreign jurisdictions, particularly Asia. Drafting and negotiation of agreements involving IP provisions, including collaboration, research and similar agreements. Knowledge of IP law in Asian countries, including China and Korea. Some experience related to IP enforcement and litigation, including claim construction, patent invalidity, infringement and damages, preferred. Strong intellectual capacity and high personal standards of excellence. Strong business and technology acumen; capacity to learn the business and technology quickly. Understand how to translate business needs into contract language and creatively resolve business issues. Passionate, proactive, highly motivated self-starter. Ability to work independently on a wide variety of tasks and drive results. Ability to prioritize and handle multiple competing tasks/projects at the same time. Excellent organizational skills, including attention to detail and ability to create specific action plans based on general guidance and deliver results. Ability to see the big picture and identify and design-out problems from the outset; continuous improvement mindset. Strong customer focus, both internal and external. Ability to work collaboratively across organizational boundaries, and with a diverse group of colleagues and internal clients in multiple countries. Ability to lead and ability to perform as part of a team. Flexible, personable and enjoys a dynamic corporate culture.

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