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

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Counsel Jobs > Associate Corporate Counsel, Intellectual Property (ip) Job in Pennsylvania > Associate Corporate Counsel, Intellectual Property (ip)

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Associate Corporate Counsel, Intellectual Property (ip)

Refer job# ABHU159158

Associate Corporate Counsel, Intellectual Property (IP) Duties: Work closely with internal clients and outside counsel to manage, protect and expand the Company's patent portfolio. Help identify and develop patentable intellectual property to strengthen and protect the company's IP assets, and prepare, file and prosecute related patent applications. Counseling of internal clients, including other members of the Legal Department and senior management, on intellectual property risks and opportunities and support for patentability, freedom-to-operate, infringement, validity and regulatory exclusivity analyses. Advise Corporate Development Department on M&A and licensing activities as needed, including conducting robust IP due diligence, preparing resulting analyses and providing meaningful input into relevant portions of transactional documents and negotiations. Management and protection of the Company's trademark portfolio, including working closely with internal clients and outside counsel to prosecute current applications, secure new trademarks, and police existing trademarks. Advise on adversarial proceedings involving our products, product candidates, and platform technologies, including IP litigation, European Oppositions and US inter partes reviews and similar matters. Train internal client groups, who develop IP, on the importance of IP to the success of the company and how they can contribute to enhancing the breadth and strength of IP portfolio by communicating and coordinating effectively with the IP team. Qualifications: JD Degree/law degree, with 3+ years relevant professional experience in a law firm and/or in-house setting, working solely or primarily in the pharmaceutical, life science and/or biotechnology industry. Admitted to practice before a state bar or jurisdiction of qualification. Admitted to practice before the U.S. Patent and Trademark Office or European Patent Office. An advanced degree in a biological science, biochemistry, chemistry, or other field relevant to pharmaceuticals, life sciences or biotechnology highly preferred. Trademark experience preferred. Experience of patent preparation in the US and international jurisdictions and familiarity with both U.S. and non-U.S. IP rules, regulations and practices. Approach IP creation and protection with a strategic mindset by anticipating internal and/or external business challenges, competitive and legal risks and opportunities and offering creative solutions. Ability to select and manage outside counsel and other external resources for quality work product, value and efficiency. Ability to communicate effectively, both orally and in writing, including the ability to explain complex issues clearly and effectively to non-scientists. Lead projects to successful completion. Engage team and partners in a positive and motivating manner. Flexibility, willingness, and ability to take on diverse tasks. Ability to facilitate and contribute to collaborative decision-making processes and work effectively on cross-functional teams.

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