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Energy Service Company
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Counsel Jobs > Associate Counsel for Intellectual Property Job in Utah > Associate Counsel for Intellectual Property

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YOUR WINDOW TO A WORLD OF OPPORTUNITIES

Associate Counsel for Intellectual Property

Refer job# ZKVF144088

Associate Counsel for Intellectual Property The candidate will support the intellectual property program and take directions from the General Counsel Intellectual Property. Will have the responsibility of supporting the IP needs of the business including drafting, negotiating, interpreting and advising on IP related agreements, such as non-disclosure agreements and license agreements, and IP provisions in commercial agreements, such as manufacturing agreements, and supply agreements. Draft freedom-to-operate and/or invalidity opinions;evaluate inventions to determine patentability. Draft, file and prosecute patent applications before the USPTO and foreign counterparts; advise and counsel employees on various IP matters involving copyrights, patents, trademarks, and trade secrets; act as a Portfolio Manager. Report to the IP counsel regarding implementing intellectual property matters that GC articulates. Assist and advise GC on implementing new proactive intellectual property strategies as needed; attend product development meetings and monitor product development efforts liaising with GC. Serve as the gatekeeper in initiating patent searches, patent filings, and design-arounds and blocking strategy and keeping GC apprised; assist in collecting and preparing Invention Disclosure Records. Respond to inquiries and collect information and documents needed by outside counsel to conduct searches, and prepare and prosecute patent applications; manage and supports artist licensing and purchase program. Supervises copyright registration program. Determine when new trademarks need to be cleared and registered, and coordinate with outside counsel to obtain clearance searches and opinions to determine appropriate timing of applications filing. Assist outside counsel in obtaining samples and any information necessary to perfect, maintain and renew trademark registrations. Manage and collect IP documents and information for due diligence projects. Prepare and secure execution of routine IP agreements (e.g., artist, independent contractors, confidentiality and non-disclosure, assignments, etc.); liaise with IP counsel GC on the above on a global basis, with input from local and international counsel as needed. Coordinate with staff to protect domain name registration portfolio; manage and recommend improvement to our trademark usage policy and program; review packaging, product documentation, websites and other advertising and marketing materials for IP and advertising claim compliance. Elevate the climate of intellectual property protection; serve as onsite resource for walk in questions relating to IP. Work collaboratively with the marketing, finance and product development departments to educate and assist them in understanding and effecting an intellectual property environment. The candidate must have Juris Doctorate degree from an ABA approved law school; 3+ years intellectual property experience. Must have experience with counseling clients on business aspects of IP matters. Experience in preparation and prosecution of patent applications is a basic requirement. Engineering or computer science undergraduate degree or other relevant coursework is required. Must have state Bar membership, (optimally Utah membership if not presently with a commitment to become a Utah bar member). USPTO membership would be helpful. An ability to work closely with the business is a must. Experience with similar dynamic business structure is preferred. Must have skills in communication, managing and completing large projects and has a passion for intellectual property and its many facets of creation, protection and enforcement.

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