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Intellectual Property Attorney
Refer job# TAHA168038
Intellectual Property Attorney The candidate will oversee and monitor the company's trademark and patent portfolio, including being responsible for clearance reviews, application of registrations and providing timely responses or taking actions necessary to maintain registration. Provide advice and recommendations to managers and/or business executives regarding trademarks, patents, copyrights and branding, including clearance searches, strategy and maintenance of trademark and patent portfolio. Review and negotiate agreements between the company and its clients, business partners, and/or service providers, including non-disclosure agreements, professional services agreements, licensing agreements, etc. Generate license agreements to both protect our company IP, and assist in obtaining a license to utilize IP owned by others, in connection with various business opportunities. Support the Director of Legal Affairs with frequent interface and management of various international law firms as requested. Assist with the training and management of team members as needed. Participate in special projects and legal research as needed. Must have in-depth knowledge of and experience with trademarks, patents and copyrights, including but not limited to: U.S. and foreign trademark and patent counseling, clearance, and prosecution experience, including review and analysis of clearance searches and preparing substantive responses to PTO office actions. o Preparing and filing applications to register trademarks and patents with the USPTO, including international registration. Monitoring our trademark and patent portfolios, both domestic and international, including responding to action items and prosecution. o Preparing and responding to cease and desist letters and handling other enforcement matters, including TTAB and PTAB proceedings (oppositions and cancellations) and matters related to the use of trademarks on social media platforms. Experience and familiarity with copyright law. Experience creating, reviewing and negotiating agreements with clients, business partners and/or service providers, with a preference for experience with IP licensing / merchandising agreements. Experience or familiarity with creative review, advertising laws, publicity rights and social media. Excellent written, verbal and interpersonal communications skills. The ability to multi-task and handle a busy schedule. Must have or be able to quickly acquire knowledge of company structure (mission, goals, and objectives), and policies and procedures. Must have a Juris Doctor degree and be admitted to a State Bar in at least one U.S. State. Must have 5 years of experience, either at a law firm or in-house, involving trademark, copyright and patent law. Must possess a valid driver's license. Have the ability to travel, both domestically and internationally if requested. Must be authorized to work lawfully in the United States of America. Will not require Falcon's firm's to commence ( sponsor ) an immigration case in order to be employed (now or in the future).
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