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Associate, Counsel - Intellectual Property
Refer job# SHUB161328
 
Associate, Counsel - Intellectual Property Duties: Provide advice with respect to technology-related transactional issues, including negotiating and drafting agreements, interpreting agreements to advising clients on rights and responsibilities, and performing due diligence for strategic investments and M&A deals. Support all lines of business and corporate staff areas. Process invention disclosures, including determining an appropriate intellectual property protection strategy and working with outside counsel to draft and prosecute patent applications that thoroughly and accurately protect inventions. Assist with trademark clearance, registration, and prosecution. Perform legal research. Prepare legal guidance documents and training materials for internal clients. Structure, draft, and negotiate various technology, intellectual property, and other agreements, such as software licenses, maintenance agreements, equipment purchase/maintenance agreements, outsourcing agreements, and professional services agreements. Provide technology and intellectual property law advice and counsel to internal clients and partners. Review, interpret, and analyze agreements, advising clients and partners on rights and responsibilities related to those agreements, including in light of the Company's policies and regulatory guidance.

Qualifications: J.D. or educational equivalent. All relevant licensing requirements including the requirements of the jurisdiction where the role will be located prior to commencement of employment. 1-4 years of experience in patent preparation and prosecution, assessing inventions to develop intellectual property protection strategies, intellectual property enforcement, and litigation, and third-party intellectual property clearance. In-house experience in the financial services industry or technology industry is preferred. Some experience in negotiating contracts preferred, including intellectual property licensing, software license, outsourcing, equipment purchase, application service provider, data processing, consulting, professional and other services. Experience with trademark, copyright, and internet-related legal matters is a plus.
 
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