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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 Job in New York > Intellectual Property Counsel

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YOUR WINDOW TO A WORLD OF OPPORTUNITIES

Intellectual Property Counsel

Refer job# STLQ145619

Intellectual Property Counsel Duties: Meet business and corporate IP needs by providing a full range of IP services and counseling to assigned business clients and building and maintaining a portfolio of patents and other IP that advance the technical and commercial interests of the company. It is contemplated that this role would engage across several programs and technologies and would have a significant focus on patent preparation and prosecution. Partners with the business to develop and execute IP strategies aligned with commercial and technical objectives. Manages global patent portfolios from invention disclosure through enforcement and agency procedures, including substantial preparation, prosecution and maintenance of Cornings US patents and supervision of US and foreign outside counsel. Performs risk assessment studies relating to business activities, new product plans, and commercial and technical strategies and provides legal opinions as to patent scope, infringement and validity. Supports patent assertion, challenges, and litigation efforts, as appropriate. Monitors the competitive IP space and works with competitive intelligence group for the relevant business(es) to identify potential infringing products. Participates in M&A due diligence activities. Performs substantive transactional work, including, negotiation and drafting license, joint-development, sponsored research, material transfer, and other IP-related agreements. Counsels the business on various legal matters, including competitors IP, public disclosure of information, what information can be disclosed at a trade show, what can be published etc. Provides departmental and Company-wide training and seminars on relevant IP and information management related topics. Provides ad-hoc support to and maintains open communication with Law Department attorneys leveraging an extensive knowledge of relevant IP law and technical areas of expertise. Mentors other professionals Participates in or leads improvement projects and Law Department initiatives. Qualifications: JD degree and member in good standing of state Bar and registered to practice before the USPTO. BS and/or advanced degree in relevant technology (Materials Science or Chemical Engineering degrees and background preferred, but other technical backgrounds and experience that correspond well with our materials and chemistry-related technologies will be considered). Very good written and verbal communication skills. Ability to identify and manage risks and recommend appropriate solutions consistent with the relevant risk tolerances of assigned business and the Company. Ability to reduce complexity to an actionable set of facts and decision points. Ability to work independently and manage multiple simultaneous projects effectively. Comfortable interacting with inventors, managers and senior leadership. Good common sense and judgment. Critical Work Experiences (Required): 7-10 years as a practicing patent attorney (law firm experience preferred). Significant experience preparing and prosecuting patents, including supervision of foreign counsel. Experience performing risk analyses and drafting infringement and validity opinions. Critical Work Experiences (Desired): Prior technical or patent examiner experience e.g., engineering or other technical role in industry. Exposure or experience drafting IP agreements and negotiating of IP transactions. Experience in litigation or USPTO or other patent office procedures.

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