Senior Intellectual Property Transactions Counsel - Senior Manager
The candidate will be responsible to lead intellectual property transactions, both during mergers and acquisitions, joint ventures, and during divestitures and significant licensing transactions. Responsibilities include managing and performing significant intellectual property due diligence during M&A transactions, providing lead counsel and advice regarding intellectual property risks and mitigation efforts during acquisition efforts, providing expertise, education and training across relevant legal disciplines and business for these inbound and outbound transactions. May supervise outside counsel and/or non-attorney staff. Lead management of intellectual property due diligence, analysis, structuring and negotiation of intellectual property terms during merger and acquisition and joint venture activity. Lead management of intellectual property issues on significant or complex IP licensing transactions and outbound divestitures, spin-offs and other sales of intellectual assets. Develop and formalize processes, templates and form agreements for special or complex IP transactions, and prepare education and other communication materials regarding those developments. Coordinate efforts of outside counsel on both inbound (merger and acquisition/joint venture) and outbound (licensing, sales and other divestitures) of intellectual property efforts. Coordinate IP transactions issues with merger and acquisition internal counsel, corporate development and new business leads, and lead counsel for growth platforms and operating groups on relevant transactions, and with other IP professionals in the Legal IP group. Provide intellectual property transactions counseling to Legal group members across geographies and specialty groups. Anticipate needs, and conceive and develop specific knowledge capital deliverables (i.e. developing/reviewing processes, communications, etc.). Anticipate and manage multiple projects, expectations and concerns working closely with senior executives, and acquisition and divestiture targets, in a focused and responsive manner. Deliver timely, rapid, focused and relevant responses to internal client teams as well as fellow Legal group colleagues. Anticipate issues and obstacles that impact group and/or client success. Develop innovative solutions in alignment with business strategy. Reports to the Managing Director - Legal Services, Intellectual Property and Strategic Initiatives.
The candidate should have a Law degree preferably with an undergraduate degree or comparable education in computer technology, software or electrical engineering or other hard science. Must have 6+ years of experience practicing intellectual property/patent law (in-house corporate intellectual property/patent attorney or within a law firm) with 5+ years of experience in managing due diligence, license and agreement structuring, negotiation and other IP-related issues in merger, acquisition, joint venture and licensing activities. Experience in patent and IP litigation and related counseling preferred. In-depth knowledge of intellectual property and information technology law, with extensive knowledge and experience of software licensing (including open source software), standards-essential patents, and FRAND terms and M&A deals desired. Travel may be required.
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