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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 > Senior Intellectual Property Counsel Job in Ohio > Senior Intellectual Property Counsel

In House Legal Job Listings

YOUR WINDOW TO A WORLD OF OPPORTUNITIES

Senior Intellectual Property Counsel

Refer job# PAAX168969

Senior Intellectual Property Counsel RESPONSIBILITIES: Drive business-focused IP landscapes and competitor IP assessment for key programs and provide actionable insight to the business and innovation teams on project direction. Ensure robust and business relevant IP capture strategies are identified, communicated, and executed. Manage freedom-to-practice assessments for product launch initiatives and appropriately communicate associated risk levels to stakeholders. Manage outside counsel in all aspects of IP practice including filings, prosecution, agreement drafting, opinion work and litigation for assigned OC businesses. Support the identification and management of trade secret technology for assigned OC businesses. Train business partners to identify and exploit IP opportunities. Proactively build counseling relationships across all functions of to develop and drive global holistic IP strategies consistent with's overall corporate strategies. Work independently yet provide a high level of coordination with the global IP team. Partner effectively with the legal team to deliver effective IP counseling on key strategic projects. Lead the drafting and negotiation of IP-centered agreements and review IP sections in commercial agreements impacting the assigned business units of. Lead IP related work in acquisitions and/or divestitures. Train key teams with a focus on joint development, confidentiality, and other IP related agreements. Assist in analyzing potential IP infringement cases against third parties and assist in defending against any IP infringement cases filed by third parties. Regularly monitor the issuance and/or publication of competitor patents and applications and advise on the impact of such to the company. QUALIFICATIONS: JD Degree Required with good standing and eligibility to practice in one state, preferably Ohio. Must be admitted to practice patent law at the US Patent & Trademark Office (USPTO). Should have 7+ years of broad IP experience including extensive experience in drafting and prosecuting the US and foreign patent applications, opinion work, and global IP portfolio management, counseling, and strategy. Track record of success in professional and personal activities. Must possess an entrepreneurial spirit with very strong customer-focused, problem-solving skills. Excellent communication, advocacy, and analytical skills to be able to apply complex information in providing legal guidance and recommendations that shape business solutions at all levels of the company. Strong relationship-building and interpersonal skills with the ability to work effectively as part of a matrixed organization with a diverse team of personnel from a variety of cultures, locations, and backgrounds. Proven leadership record with the ability to promote the interests of the IP function. PREFERRED EXPERIENCE: Bachelor's Degree or a minor in Chemistry or Chemical Engineering with a specialty in Materials Science or Chemistry is preferred. IP counseling for a building/manufacturing company is a plus. Litigation experience a plus.

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