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Melinda Burrows
Deputy General Counsel
- Litigation and
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Energy Service Company

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Intellectual Property Counsel
Refer job# JKHP150778
Intellectual Property Counsel RESPONSIBILITIES: Take the leading role in shaping intellectual property portfolio development strategy. Manage, protect and develop the Company's patent portfolio, including working closely with research & development and outside counsel(s) to proactively identify and develop patentable intellectual property and to prepare, file and prosecute related patent applications. Approach IP with a strategic mindset by anticipating future business, competitive and legal risks, and identify creative solutions and opportunities. Develop a deep knowledge of the Company's existing and forward reaching research and development programs, business activities, and product candidates in the context of competitor landscape, industry trends, laws and regulations affecting IP. Negotiate, draft and review agreements such as licenses, research agreements, clinical trial agreements, collaboration agreements, confidentiality agreements, supplier agreements, consulting agreements and material transfer agreements. Manage outside counsel in such matters. Counsel internal clients, including senior management and members of research & development and business development teams, on IP risks and opportunities. Provide IP due diligence support for business development activities and manage patentability, freedom-to-operate, infringement, validity and regulatory exclusivity analyses. Train internal client groups to promote awareness of IP and its implications on various functions within the organization. Develop a solid understanding of Nutcracker's technologies and business with the ability to evaluate and balance both legal and business factors when providing advice.

QUALIFICATIONS: JD degree required. An advanced degree (Masters or Ph.D.) in the biological sciences (molecular biology or biochemistry) is preferred. State bar and USPTO registration is required. 5+ years relevant professional experience in a law firm and/or in-house counsel, with experience in the pharmaceutical, life science and/or biotechnology industry required. Transactional or licensing experience (negotiating and/or drafting IP licenses) is an advantage. Successful candidates should have demonstrable skills in evaluating new technologies and seeing such technologies through the patenting process from invention disclosure to patent issuance. Experience with U.S. and foreign patent systems, including the patent development, filing and prosecution processes, invention review, patent searching, and freedom-to-operate analyses. Experience managing outside counsel. Ability to facilitate and contribute to collaborative decision-making processes and work effectively on cross-functional teams. Outstanding interpersonal, communication, negotiation and presentation/public speaking skills. The ability to operate with candid transparency, professionalism, strong emotional intelligence, and the highest degree of integrity.

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