Assistant Intellectual Property

Company Name:
Assistant Intellectual Property (IP) Counsel
The candidate will be providing proactive, effective and timely guidance, with clear and concise communication skills, to senior leadership and management, general legal counsel, contract support personnel, and all levels of the engineering and business organizations, on intellectual property matters, particularly in the areas of patent, trademark, trade secret, and copyright law, and related litigation. Will be providing training in these areas to firm employees. Independently and proactively performing all duties, including discussing or referring appropriate matters to the firm legal director, or peers, as appropriate. Meeting regularly and driving high level of engagement with technical, legal and management personnel, periodically participating in meetings with representatives of outside companies, and providing advice to management on intellectual property matters. Ensuring the establishment and execution of appropriate domestic and foreign intellectual property protection strategies within the group and for the technological areas within area of responsibility. Actively leading and participating in the development and implementation of intellectual property strategies for firm, and its technologies and research and development projects. Supervising outside counsel in the preparation and prosecution of patent applications, both domestic and foreign. Continually monitoring issued third party patents in assigned areas of responsibility, particularly with regard to freedom of operation considerations, providing leadership to alternative design studies, and rendering or consulting on opinions of counsel, with goal of identifying and appropriately mitigating intellectual property risks. Drafting and negotiating various intellectual property agreements, including development agreements, technical services agreements, software licenses, non-disclosure agreements and other miscellaneous agreements and providing counsel to management, general legal counsel, and contract support personnel on other agreements that include intellectual property components, such as supply agreements, sales and service contracts and acquisition agreements. Learning and implementing current intellectual property department tools and processes and working proactively with members of the firm and business unit legal departments with the goal of continuous improvement of department processes.
The candidate should have solid academic credentials from a top undergraduate institution and law school. Undergraduate degree in material science, electrical, mechanical or aerospace engineering needed. Should be admitted to practice before one US State Bar. Must be admitted to practice before the USPTO, or extensive patent litigation experience. Should have 3+ years of IP law training in a top law firm, and 7+ years of practicing intellectual property law experience. Required experience: enterprise, product, and technology IP strategy development and execution; trade secret and patent law counseling; patent preparation and prosecution; patent clearance and risk mitigation; IP contractual terms drafting and negotiations. Preferred additional experience: supplier/university agreement IP terms drafting and negotiations; sales/prime contracts and joint development agreements drafting and negotiation; U.S. Government contractor intellectual property issues, including knowledge of DoD, DOE and NASA IP related procurement regulations; patent litigation. Engineering or other technical experience beneficial.

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