Intellectual Property Counsel - Patent & Ip Counsel Jobs in Washington - 154773 | Submit Resume | General Counsel Consulting
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Intellectual Property Counsel - Patent & Ip
Refer job# HFEK154773
 
Intellectual Property Counsel - Patent & IP Responsibilities: Embeds with the business to gain a deep understanding of key assets and develop comprehensive IP protection strategies, including evaluating assets for patent protection. Leads and manages patenting efforts for specific business groups by identifying strategic focus areas, mining and harvesting innovations, evaluating the patentability of such innovations, and setting global patent filing strategies. Develops effective strategies for patenting business process and software inventions and invention mining and harvesting. Manages outside counsel in effectively drafting and prosecuting patents, including reviewing and approving their work related to drafting patent applications, amendments, appeals and other responses to Office Actions. Counsels and forges solid and trusting relationships with inventors and business leaders and finds strategic ways to implement our IP strategy. Assists where necessary on the management of operations relating to the patent portfolio. Develops and implements IP strategic initiatives, policies, best practices, and training designed to mitigate IP risks and maximize business outcomes. Develops and formalizes processes and templates related to patents and other IP issues. Counsels internal stakeholders (such as business clients, other corporate functions, and other legal colleagues) on a wide variety of IP issues, and negotiates with external clients and third parties on business transactions as necessary. Drafts, analyzes, structures and negotiates agreements related to IP transactions, such as licenses.

Qualifications: JD Degree from an accredited law school. 6+ years of hands-on experience practicing patent law and drafting/prosecuting or managing the prosecution of patents globally, particularly in the areas of business method, software and computer-related technologies. Preferred Qualifications: Undergraduate degree or comparable education in electrical or computer engineering, or computer science preferred. Significant and demonstrable experience managing invention mining, harvesting, and patenting efforts in-house or as outside patent counsel. Significant experience in IP transactions that includes software licensing, and a strong knowledge of IP issues related to the technology sector. Licensed member of a Bar of at least one state. Admission to practice before the U.S. Patent and Trademark Office. Significant experience building relationships with inventors and business executives. Professional Skills: Proactive, organized, and self-motivated and works well in a fast-paced global environment. Committed to collaborating with colleagues in the IP team as well as other stakeholders to achieve shared goals, build relationships, and be a strong team player. Skilled in anticipating obstacles and risks, and developing innovative solutions in alignment with business strategy. Analytical skills, business acumen, and ability to bridge the legal and business aspects of IP law by providing solid IP advice in a business practical manner. Excellent oral and written communication and presentation skills. Executive presence and demonstrated leadership in a professional setting. Ability to manage many complex projects successfully, and set and meet priorities. Experience performing detailed competitive analyses using global patent data is a plus. Demonstrated leadership in professional setting; either military or civilian. Demonstrated teamwork and collaboration in a professional setting; either military or civilian. Applicants for employment in the US must have work authorization that does not now or in the future require sponsorship of a visa for employment authorization in the United States.
 
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