Senior Counsel - Intellectual Property The candidate will be managing, implementing, and improving global Intellectual Property strategies for assigned business units to support strategic business objectives including harvesting new inventions, leading invention evaluation boards, managing an IP budget(s), and overseeing internal resources and outside counsel responsible for patent and trademark prosecution. Advising management in the legal function and in the business as to IP risks and opportunities in business and technology plans. Advising business on optimal structure of business arrangements and technology strategy based on current and anticipated IP portfolio as well as competitive considerations. Negotiating agreements with detailed IP terms, including development agreements, IP licenses, Master Service Agreements, M&A Agreements, NDAs, and the like. Structuring, negotiating, and drafting contracts to support global licensing and commercial activities, including those related to software and digital technologies. Implementing IP landscape and IP clearance reviews and processes to minimize patent infringement risks. Providing training to increase business' IP acumen and help drive a culture of compliance. Reconciling IP and technology strategies as well as business objectives to adapt to varying IP laws globally. Investigating allegations of employee IP theft and data loss. Assisting in IP due diligence for M&A activities. Assisting marketing and communications groups with branding campaigns, including clearance and protection of new trademarks. Identifying, assessing, and managing technical data and other digital rights.
The candidate should have Bachelor's degree in engineering or science, preferably electrical engineering, physics, or computer science. Should have a J.D. or equivalent from an accredited law school or university. Should be licensed to practice before the US or other International Patent and Trademark Office. Must have 5+ years of intellectual property practice in patents, trademarks, and (complex) IP transactions. Experience correlating IP and licensing strategy with business strategy is needed. Experience working independently as well as in a team-based environment is required. Experience in supporting a global business is essential. Experience with governmental R&D funding and IP issues associated therewith a plus. Experience with advising international businesses with IP issues, including advice and establishment of policies and procedures to protect IP assets is a prerequisite. Experience with IP transactions, assignments, licensing, and joint venture arrangements as well as cross internal business licenses/arrangements is a must. Experience preparing and prosecution of domestic and foreign patent & trademark applications is required. Experience managing an assigned intellectual property portfolio including patents, trademarks, copyrights, and trade secrets is needed. Experience with cybersecurity legal issues and open-source software licenses is essential. Ability to speak multiple languages highly desired. Ability to lead programs/projects is preferred. Ability to identify, analyze and distill complex issues and data into easy-to-understand communications is an asset. Ability to provide legal counseling to world-class scientists and corporate management staff regarding international intellectual property matters is ideal. Experience with IP issues relative to government funded awards and grants a plus.
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