Counsel - Intellectual Property The candidate will identify patentable inventions, organize invention disclosure review committees, perform novelty analyses and advise product development teams about patentability, establish prosecution strategy, supervise patent prosecution by outside counsel, manage patent portfolio. Perform patent searches, create or obtain (from outside counsel) clearance analyses and opinions, direct design-around activities, advise product development teams. Assist with managing company's trademark portfolio, including preparing and prosecuting U.S. trademark applications, responding to office actions, collecting and filing evidence of use, performing trademark clearance searches, advising marketing and business teams on proper trademark usage, managing outside foreign counsels for foreign trademarks. Support offensive and defensive IP litigation; support IP enforcement actions including investigating infringement, issuing takedown demands, drafting demand letters, and interacting with outside legal counsel as needed. Draft and negotiate IP License Agreements, Development Agreements, Confidentiality Agreements, Services Agreements. Collect and create competitive intelligence and surveil competitor patent portfolios. Perform M&A due diligence analyses. Provide general intellectual property counseling. Reports to: Chief Intellectual Property Counsel.
The candidate must have JD degree and Degree in electrical engineering, mechanical engineering, materials science, or other hard science with controls experience. Must have 4-6 years experience practicing patent law in a law firm or corporate law department. Must be Licensed to practice law in Wisconsin, Illinois, or qualified to secure Illinois Limited House Counsel license. USPTO patent Bar registration is preferred. Patent litigation and licensing experience is preferred. Must have familiarity with trademark prosecution and enforcement. Must have strong analytical skills, business acumen, and the ability to effectively merge the technical and commercial aspects of intellectual property. Must have excellent judgement; ability to apply judgement independently and make effective decisions/recommendations. Must have skilled in anticipating obstacles and developing innovative solutions in alignment with business strategy.
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