Associate General Counsel/intellectual Property - Ip Portfolio Manager Counsel Jobs in Illinois - 171555 | Submit Resume | General Counsel Consulting
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Energy Service Company

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AVP & Senior Counsel
Saint Louis Missouri United States

JOB SUMMARY: Under the direction of the Vice President & Assistant General Counsel (?VP & AGC?), manages business transactional support for the Company?s various business units, select corporate (non-Claims) litigation, and other legal affairs of ...

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Associate General Counsel/intellectual Property - Ip Portfolio Manager
Refer job# WLBT171555
Associate General Counsel/Intellectual Property - IP Portfolio Manager The candidate will be working directly with inventors and colleagues to determine patentability of invention disclosures related to tech portfolio. Drafting utility patent applications, and working directly with inventors to review and approve drafted patent applications before filing. Prosecuting patent applications related to tech portfolio in-house both in the United States and in certain foreign jurisdictions by providing direct instructions to outside counsel foreign associates, including drafting and reviewing applications, interviewing patent examiners, drafting and reviewing office action responses, drafting and reviewing appeal briefs, and all other phases of patent prosecution. Supervising patent prosecution activities related to tech portfolio by directly communicating with outside counsel. Developing patent strategies that focus patent protection on competitively differentiating features of products, including working with product owners to ensure alignment between business stakeholders and patent strategy for tech portfolio. Providing intellectual property support to engineering and product teams related to tech portfolio, including invention mining, patent training, and conducting patent audits of products to identify existing and planned patent coverage and also identify patent whitespace for further IP development. Supporting colleagues in the legal department to ensure alignment between patent strategy and IP terms in agreements and third parties bearing on product development, such as joint development agreements, standards-setting bodies, agreements with tech transfer offices, and so forth. Assisting litigation colleagues in the legal department to protect investment in its patent portfolio by evaluating the potential to assert claims in its patent portfolio, including drafting claim charts, reviewing patent assets, and providing opinions regarding third-party usage. Assisting corporate development team to perform intellectual property due diligence in connection with divestitures and acquisitions being explored and counsel business leaders on any material items; mitigate risks as necessary in coordination with M&A colleagues in the legal department.

The candidate should have 6 years of patent-related experience. Previous in-house patent preparation and prosecution experience in a large corporation are desirable but not necessary. Experience working with inventors, developing patent portfolios, and preparing & prosecuting patent applications, including drafting patent applications, responding to office actions, and appeals, and conducting patent examiner interviews. Degree in computer science, mathematics, statistics, physics, electrical engineering, computer engineering, aerospace engineering, or related industry experience, and/or in-depth knowledge of media content distribution, including but not limited to broadcast networks, cloud networking, wireless networks, end-user devices used to access and playback media content, artificial intelligence and machine learning, data science methodologies, and identity resolution techniques. U.S Patent Attorney admitted to practice before the United States Patent and Trademark Office. Admitted to practice law in state of residence.

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