Description:
The Assistant General Counsel IP will be responsible for supporting the Business Unit's Intellectual Property team. The successful candidate will support the creation of a patent portfolio by leading preparation and prosecution of domestic and international patent applications; drafting and negotiating IP-related provisions in sales, supply, licensing, technology, joint-development, confidentiality, and other agreements; driving freedom to practice analysis, evaluating and resolving product clearance issues for product development; developing and investigating IP enforcement opportunities; resolving defensive matters; providing guidance along with training management and technical staff regarding IP protection; and support M&A due diligence activities.Key Responsibilities:
- Obtain intellectual property protection for commercial differentiators and develop IP enforcement and defensive strategies;
- Educate and train management, staff, and other resources;
- Ensure freedom to practice and avoidance of third-party IP;
- Manage outside counsel and other IP practitioners;
- Perform mergers and acquisition IP due diligence; and
- Draft and negotiate IP-related provision in agreements.YOU MUST HAVE
- Bachelor's Degree in engineering or computer science & Juris Doctorate of Law including registrations to practice before a state bar and the USPTO
- Minimum 6-8 years' experience in the practice of law with a significant focus on intellectual property, patent protection, IP enforcement and new product introduction. A combination of law firm and corporate legal department experience in these areas is an advantage.
- Experience in drafting and negotiating complex commercial contracts