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Chief Intellectual Property Counsel
Refer job# FHHH153280
 
Chief Intellectual Property Counsel Duties: Recommends optimal strategies for protecting, leveraging, and optimizing Company's intellectual property portfolios. Manages patent and trademark clearance processes and advises on related business risks and alternatives. Develops and manages internal invention disclosure and patent protection program. Creates robust training program to educate Company personnel on wide range of IP-related matters, including freedom to operate, risk management, and patent and trademark best practices. Works with other Company personnel to determine which intellectual property to formally protect and manages preparation, filing, and prosecution of patent, trademark, and copyright applications. Supports cross-functional efforts by conducting due diligence regarding potential development and investment activities. Reviews and negotiates IP-related agreements, including in-licenses, out-licenses, collaboration agreements, purchase agreements, and development agreements. Manages IP budget to optimize use of resources and meet designated cost targets. Acts as a resource for other Company personnel regarding all areas of intellectual property law, including patents, trademarks, copyrights, trade secrets, infringement, and licensing (including open source), as well as advertising claims. Personally manages patent portfolios for one or more business unit(s), including managing utility patent application filings and prosecution, and drafting design patent applications. Assists other members of the Legal Department, as needed, in additional legal matters. Manages brand protection/anti-counterfeit activities and partners with Chief Litigation Counsel to support IP-related litigation. Supports the IP needs of and its business units. Manages dedicated team of attorneys and paralegals with a focus on driving collaboration, engagement, and teamwork within the group. Selects and manages outside counsel and vendors. Demonstrates honesty, responsibility, integrity and fulfillment of commitments.

Qualifications: Outstanding academic credentials. Bar certification in good standing. 10+ years' relevant experience in IP law, including significant experience managing patent and trademark portfolios, with 5+ years' patent practice. Significant experience drafting and negotiating intellectual property-related agreements. Strong research, writing, and oral communication skills. Experience managing outside counsel and establishing and monitoring legal budgets on a project basis. Sound judgment, problem-solving and client management skills. Ability to work independently, as well as in a team environment. Ability to be flexible and adapt to a dynamic workload. Strong organizational skills and focus on sustainable and efficient processes. Strong sense of integrity and appreciation for confidentiality issues. Preferred. Law firm experience in patent practice. Computer science or engineering background. Significant in-house experience, including experience as Chief IP Counsel or Chief Patent Counsel.
 
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