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Energy Service Company

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Senior Counsel, Intellectual Property
Refer job# ZLKK168810
Senior Counsel, Intellectual Property Duties: Provide counsel across the organization on patent, trademark, copyright, and trade secret law. Oversee the Company's global intellectual property portfolio and manage the prosecution of trademarks and patents. Manage intellectual property paralegal. Draft utility and design patent applications on new technologies and prosecute them to issuance with the USPTO. Partner with colleagues to design a framework for a robust patent program review process and advise on Company policies. Ensure proactive management and disciplined use of outside counsel and other external resources. Manage global intellectual property budget. Develop strong relationships with law firms selected to provide services. Work with and manage foreign patent counsel to file patent applications in foreign jurisdictions. Review existing Company patent portfolio and identify areas of opportunity for new filings.

Qualifications: Juris Doctorate degree from an accredited law school required. Active Bar member in good standing in California or ability to satisfy in-house specialty requirements. Admitted to practice and registered in good standing before the U.S. Patent and Trademark office. Should have 7 years of intellectual property legal experience in-house at a company in combination with experience at a premier patent or large law firm. Experience working with a technology company is highly preferred. Hands-on experience in drafting and prosecuting patent applications in the U.S. and worldwide for a large complex portfolio. Possess and maintain comprehensive knowledge of U.S. and international laws for the assigned areas, especially in patent law. Business-oriented professional with strong analytic skills and the ability to suggest practical and innovative solutions for legal issues in support of business initiatives and objectives. Excellent interpersonal skills and the ability to influence others and build and foster internal and external relationships. Ability to think strategically and provide visionary leadership. Ability to communicate effectively both verbally and in writing with all levels of the organization including senior management.
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