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Melinda Burrows
Deputy General Counsel
- Litigation and
Compliance, Progress
Energy Service Company
LLC

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Counsel Jobs > Senior Intellectual Property Counsel Job in Maine > Senior Intellectual Property Counsel

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YOUR WINDOW TO A WORLD OF OPPORTUNITIES

Senior Intellectual Property Counsel

Refer job# LWLJ158706

Senior Intellectual Property Counsel The candidate will be an integral member of the company's intellectual property group and will support teams across the company to build and leverage the company's intellectual property interests, with a focus on diagnostic instrumentation. Include handling a full scope of intellectual property issues for the relevant technology areas. This includes diagnostic instrument patent issues, including general client counseling, patent preparation and prosecution, rendering legal opinions with respect to patentability, validity and freedom to operate, patent landscaping, due diligence reviews in support of M&A and other activities, litigation support as needed, and intellectual property-related transactional work. Work closely with other members of the IP team, Legal Department, R&D, business development, and commercial leadership in a very innovative and growth-oriented environment, and will collaborate with other in-house resources and attorneys to accomplish the company's strategic objectives. The position is intended for the candidate interested in a truly empowered, broadly focused career, with the opportunity to help shape the current and future IP practice of a very successful company operating in the exciting and growing animal healthcare diagnostic space. Support R&D and the business with worldwide patent prosecution and portfolio management of various technologies, including those related to diagnostic instrumentation. Provide counsel and legal support on patentability and freedom to operate issues, including drafting opinions as necessary. Advise on trademark clearance and usage, as well as intellectual property issues related to copyrights, trade secrets, standard-setting organizations and software. Draft, review, negotiate and advise as needed on various forms of IP agreements, including licenses, development, sponsored research and material transfer agreements. Work closely with others in the Legal Department in the support of litigation related to IP claims. Lead or support IP due diligence on business acquisitions. Provide counsel to clients and other functional staff on general legal IP questions. Maintain knowledge of the Animal Health diagnostic industry, and IP and related regulatory developments that affect the company, and will advise internal stakeholders as appropriate. Work with and supervise the US and international outside counsel on various IP matters as appropriate. Manage IP-related budgets as appropriate, and adhere to and model the company's Purpose & Guiding Principles. The candidate should have a Bachelor's degree or greater in Chemical, Mechanical or Electrical Engineering. Must have a Juris Doctor Degree and registered to practice before the United States Patent and Trademark Office (USPTO). Should have 6+ years of relevant experience in a law firm or corporate setting. A broad and detailed understanding of US IP laws and practices, with at least a working understanding of foreign IP laws and practices, is needed. Should preferably have experience IP litigation and/or litigation support as well as counseling on trademarks, copyrights, and software. Experience in managing large patent dockets and dealing with outside counsel, and developing and managing IP budgets are needed. Prior use of IP Analytics toolsets is a prerequisite. The ability to interact effectively with senior management is desired.

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