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General Counsel Consulting

General Counsel
Consulting
provided
exceptional
service in helping
my organization
recruit for a hard
to fill position.
They did extensive
work on the front
end to understand
our needs and
our culture and
began referring
highly qualified
candidates almost
immediately.

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

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Counsel Jobs > Intellectual Property Counsel Job in Wisconsin > Intellectual Property Counsel

In House Legal Job Listings

YOUR WINDOW TO A WORLD OF OPPORTUNITIES

Intellectual Property Counsel

Refer job# HIIP160178

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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