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Intellectual Property Corporate Counsel
Refer job# MQFQ158088
 
Intellectual Property Corporate Counsel The candidate will manages a growing, diverse global patent, trade secret and trademark licensing portfolio for chemical businesses. Partners with business, technical and legal department staff to develop and implement patent and trade secret strategies for multinational businesses involving freedom-to-operate, validity, patent procurement, enforcement, infringement and challenges to other parties patents, as well as advises on, drafts and negotiates intellectual property agreements such as joint development and license agreements. Works directly with technical staff, non-US external agents and attorneys, in-house legal assistants, and patent agent and attorney colleagues. Trusted advisor to mid- and senior-level business partners. Analyzes prior art and invention disclosures to identify patentable subject matter, determining inventorship, and drafting patent applications for filing in the US, EU, Japan, China and other countries. Files and prosecutes patent applications globally. Utilizes patent office and commercial patent databases to monitor third party patent applications. Analyzes and advises on patent validity and infringement, including drafting formal opinions of counsel. Defends and files pre- and post-grant oppositions and other post-grant review proceedings. Advises on protection of trade secrets and know-how. Advises on, drafts and negotiates license agreements, assignment agreements and other agreements associated with all aspects of intellectual property including patents, trademarks, copyrights, trade secrets and know-how. Advises on, drafts and negotiates intellectual property terms in commercial transaction, merger and acquisition and other agreements. Conducts training on intellectual property issues for technical and business staff.

The candidate should be Admitted to practice and in good standing with the US Patent and Trademark Office. Admitted to practice, active member and in good standing in a state Bar. Should have 8+ years relevant experience in chemical patent practice. An excellent ability to grasp legal and business issues quickly; balance risks; exercise sound judgment; and provide practical, constructive and timely counsel. Experience advising clients on patent and trade secret strategies and related intellectual property matters. Experience with US, European, Japanese and Chinese patent prosecution. Excellent verbal and written communication skills, and a desire and ability to build strong working relationships with internal clients and business partners. Detail-oriented, innovative, strategic, self-motivated and able to motivate others. Background or experience in fluoropolymer and/or titanium dioxide chemistry.
 
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