Licensing and Intellectual Property Counsel Responsibilities: Responsibilities may include the following and other duties may be assigned. Provide legal advice and service to business and technology groups on patents, copyrights, trademarks, trade secrets, and trade names including patentability of inventions, discovery, and avoiding infringement of patents. Coordinate closely with the General Counsel and CLO to align IP priorities. Coordinating with technology groups to harvest invention disclosures and prepare patent application drafts. Coordinating with outside counsel to file and prosecute patent applications to obtain the broadest possible protection for the company's inventions. Coordinating with technology and manufacturing groups to ensure all commercially important inventions are protected by valid patents and that products do not infringe valid third-party patents. Ensure all commercially important trademarks (including words, names, symbols and logos) are protected by, e.g., valid trademark registrations. Coordinating with outside counsel to handle appeal and interference proceedings. Render opinions regarding infringement and validity of patents. Provide advice to protect company's interest in scientific/technical publications and with collaborators, communities and suppliers. Coordinate with CLO and outside counsel to negotiate and draft patent licenses, joint development agreement, materials transfer agreements, and other agreements. Conducting and evaluate state-of-the-art patentability and infringement searches. Assist General Counsel in planning, tracking and managing the IP budget.
Qualifications: JD Degree. Must have passed and retained attorney registration in at least one state (preferably Massachusetts or Colorado) and be in good standing. Chemistry or Materials Science, undergraduate degree minimum, masters or higher strongly preferred. Experience with nanotechnology and/or energy storage (lithium ion batteries, supercapacitors, etc.) strongly preferred. Must have passed and retained USPTO patent bar registration in good standing. 3+ years of law firm or in-house experience performing and/or managing broad IP responsibilities. 5+ years strongly preferred. Excellent candidates will also have some or all of the following: In-depth knowledge and experience of: Patent preparation and prosecution; patent licensing support or management right-to-use/freedom-to-operate searching, analysis and clearance; and IP due diligence activities. Comfort with fast paced, highly self-directed start up culture. Strong business sense, with a focus on monetizing IP. Experience managing work with colleagues who are not geographically co-located. Ability to work with and influence all levels of management and employees within the organization. Excellent strategic planning skills. Exceptional presentation, oral and written communication skills. Ability to work with complex and sensitive information. Demonstrated ability to think creatively about how to do more with less. Experience counseling executives on complex legal issues.
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