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Licensing Intellectual Property Attorney
Refer job# NGFX146306
 
Licensing Intellectual Property Attorney The candidate will be responsible for collaborating with the business leads, identify candidate technologies for monetization of intellectual property. Research potential commercial markets for monetization of candidate technologies. Lead IP evaluation and working with the business, assess business opportunity for commercial opportunity. Develop and drive IP strategies to maximize commercialization opportunities. Prepare market analysis and evaluate and develop go to market strategies for identified technologies. Negotiate licensing or other monetization agreements with third parties. Support technology transfer initiatives, joint development opportunities and licensing programs. Prepare IP valuations, conduct market research and determine potential transaction value. Structure and negotiate IP and technology agreements. Support monetization efforts originated at other business units or by other licensing professionals. Select, retain, manage outside resources to assist in monetization efforts. Assist in the full range of intellectual property transactions. Assist with or prepare licenses and appropriate exhibits as necessary to comply with FOSS and other third party software. Provide general counseling and advice on intellectual property matters and how intellectual property impacts firm. Support of M&A due diligence activities as concerns intellectual property. Work with in house and outside counsel to support litigation activity and opinion activity involving intellectual property. Perform IP review of software products and their license agreements to determine compliance with government regulations and rights to technical data and software, and third party software, including FOSS. Other related duties as assigned.

The candidate must have 8 years of experience with intellectual property licensing, 2+ years in commercializing technologies or 2+ years of negotiating experience. Experience in working with engineers and business leaders, and able to interface with external customers is necessary. Experience with IP/technology transfer, licensing and sale and/or joint development is essential. Experience with SW and FOSS licensing is required. Knowledge of export control regulations is desired. Strong organizational ability and excellent written and verbal communications skills are needed. Should have good computer skills and familiarity with standard office software (Word, Excel, Outlook etc.) as well as database tools such as MS Access and IP specific tools such as Innography. JD from an accredited US law school is necessary. A BS in Engineering, Computer or Physical Sciences, MS or MBA is a plus.
 
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