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In House Legal Job Listings

Intellectual Property Counsel
Refer job# NZRW158170
Intellectual Property Counsel Duties: Conduct patentability, patent landscape, patent clearance, and patent non-infringement/validity searches and analyses, draft opinions and develop processes related to the same; Conduct trademark clearance and trademark non-infringement searches and analyses, draft opinions and develop processes related to the same; Collaborate with business teams to identify and protect new inventions through ideation sessions and the development of associated processes; Draft and prosecute U.S. and international patent and trademark applications to obtain strategic patent and trademark protection; Develop, implement and maintain a trade secret compliance, identification and protection program for the Company; Manage and maintain SHINE's intellectual property portfolio, including developing and implementing intellectual property life-cycle management strategies and instituting intellectual property review committees; Monitor competitive intellectual property on an ongoing basis; Draft, revise and negotiate IP License Agreements, Joint Development Agreements, Collaboration Agreements, University Research and Development Agreements, Non-Disclosure Agreements, and other IP-related Agreements; Perform IP due diligence analysis of opportunities and organize IP due diligence as requested by third parties; Analyze offensive and defensive infringement positions, send and respond to patent notice letters, and support IP litigation; Develop and deliver employee trainings on IP-related matters; and Provide general intellectual property counseling.

Requirements: JD Degree from a top law school; Must be admitted, active, and in good standing with the State Bar of Wisconsin (or with another state bar and registered, or eligible to register, as in-house counsel with the State Bar of Wisconsin); Bachelor's or advanced degree in physics, nuclear engineering and/or chemical engineering; Registered patent attorney admitted to practice before the USPTO; 3+ years of relevant intellectual property law experience; Experience implementing and monitoring intellectual property strategies to support technology or product development and deployment; Experience drafting and negotiating IP-related agreements having various levels of complexity; Experience in preparation and prosecution of U.S. and non-U.S. patent and trademark applications; Experience evaluating and advising on infringement risks and drafting legal opinions; Experience evaluating potential enforcement claims and disputed matters and advising on same; Excellent oral and written communication skills and interpersonal skills; Demonstrated ability to work efficiently, prioritize workflow, meet demanding deadlines, and manage multi-dimensional projects in a fast-paced environment with a passion for results; Sound and practical business judgment; Ability to work both independently and cross-functionally with various teams across the organization in a team environment, including Engineering, Sales, Business Development and Marketing; Eagerness for learning new areas of law and expanding legal and business skill sets; and, Passionate about technology and energized by the challenges of serving a dynamic, hyper-growth company.
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