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Legal Counsel, Innovation And Intellectual Property
Refer job# LLKM156269
 
Legal Counsel, Innovation and Intellectual Property Responsibilities: Create, communicate, implement, manage, and develop the Intellectual Property (IP) strategy in cooperation with our technical and development teams. Oversee the intellectual property program including managing both the patent and trademark portfolios of the company. Responsible for end-to-end intellectual property processes including education about the program, invention mining, outside counsel management, strategic decision making, and partnerships with other teams on innovation efforts Coordinate infringement analyses and prior art research work with internal teams and outside advisors to evaluate IP portfolio vs. competitors and other market participants. Evaluate licensing and/or protection of IP as new products are developed in cooperation with product teams, specifically related to SaaS, IaaS and PaaS products. Manage and support litigation matters related to IP. Manage outside counsel, including reviewing and approving work related to drafting patent prosecution, amendments, and appeals. Advise senior executives on complex legal and business issues, including the resolution of contractual disputes. Serve as an advisor and educate internal stakeholders (such as design and construction teams, product development supplier contracting and other legal colleagues) on Intellectual Property and licensing issues. Draft and negotiate a variety of complex contracts with suppliers, partner companies, universities, and governmental entities to support business objectives. Work closely with the marketing team to support various marketing initiatives and branding needs related to intellectual property. Assist in the development and management of Open Source Software program Develop and implement strategic IP initiatives, policies, best practices, and training designed to elevate IP portfolio to a more strategic asset of the company, including training and advising the business on participation in technology consortiums and creating best in class licensing vehicles. Support mergers and acquisitions activities, including performing due diligence and risk assessments and managing the integration of any acquired IP. Resolve copyright and trademark issues with third parties.

Qualifications: JD or equivalent from an ABA recognized university is required. Admitted to practice in the state in which they are hired or ability to qualify to practice as an in-house counsel in the relevant jurisdiction, note that patent specific licensing is welcome. 5+ years of legal experience including the subject matters relevant to this role. Experience managing and advising on diverse intellectual property portfolios. Direct work experience supporting software licensing and/or software licensing. Experience negotiating contracts related to IP. Be an effective time manager with the ability to work independently. Strategic and creative thinker with strong attention to detail. Ability to work effectively in an unstructured environment requiring new perspectives and creative approaches.
 
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