Intellectual Property Counsel

Role Description

This role involves providing assigned divisions with all aspects of patent counseling, including working with global research and development teams in the development and procurement of appropriate patent or trade secrets protection for all innovation projects.

• Work with division personnel to establish and implement project specific patent or trade secret strategies reflecting business objectives.
• Communicate effectively with global leaders on patent and trade secret matters.
• Personally manage international patent portfolios for assigned divisions, including managing outside counsel.
• Perform and manage patent clearance searches, perform freedom-to-operate analysis, and guide the business team accordingly.
• Review, negotiate, and draft agreements relating to IP or review IP clauses for commercial agreements in collaboration with in-house legal counsel for assigned divisions.
• Assist Head of IP and General Counsel with patent litigation, including patent claim analysis, litigation strategy, settlement/resolution positions, and responding to discovery requests.
• Educate employees on important patent issues, including training on patent laws and patent searching.
• Demonstrate strategic value and competence in applying IP legal skills to daily in-house corporate, business and other matters.
• Supervise outside counsel and related budgets, as needed.
• Identify areas of company risk within IP and make proposals for and lead implementation of mitigation strategies.
• Willingness to assist broader US legal team with overflow projects as needed, including drafting contracts.
• Willingness to travel and work extended hours, as needed.
• Ability to work in an organized, detailed manner under tight deadlines.
• Ability to think independently and exercise sound judgement to make appropriate decisions.

Qualifications

• Juris Doctor degree and licensed to practice law in at least one US state or be in law school pursuing a JD.
• PhD in Technology or relevant field (highly regarded).
• Entry level years of experience 0-4 years.

Requirements

• Experience working in chemical industry, life sciences and/or manufacturing industry strongly preferred, but not required.

Company Description