Description:
Reporting to the Vice President—Legal Tech/IP the Senior Director, IP Attorney you will play a critical role in safeguarding and managing our intellectual property assets.They will have responsibility for managing the IP needs of the business including drafting, negotiating, interpreting, and advising clients on IP related agreements, such as non-disclosure agreements and license agreements, and IP provisions in commercial agreements, such as policy agreements, and claims agreements.
They will work closely with cross-functional teams and external partners to ensure the protection and enforcement of our intellectual property rights and support the growth of our IP licensing activities across Patents, Trademarks, and copyrights.
They will be draft freedom-to-operate and/or invalidity opinions, evaluation inventions to determine patentability and, draft, file and prosecute patent applications before the USPTO. They will also be responsible for advising and counseling clients on various IP matters involving copyrights, patents, trademarks, and trade secrets and managing outside counsel as needed.
Key Responsibilities:
- Patent portfolio management including new application filing, prosecution, and strategy development
- Patent search/analysis including search/analysis, patentability search/analysis and due diligence.
- Work closely with stakeholders to identify and protect new intellectual property and counsel and customers and product development/business development teams on intellectual property matters.
- Review and negotiate IP-related agreements, trademark registration, renewals, and enforcement.
- Create and deliver IP training and other related knowledge based projects.
Qualifications:
- A Juris Doctor from a recognized, accredited law school and licensed to
- The candidate must be admitted to the Patent Bar. Must have 10+ years of experience in both litigation and transactional areas of patent practice, as well as some experience in soft intellectual property.
- Experience with patent preparation and prosecution experience preferred.
- Experience with IP licensing and transactions preferred.
- Registered to practice before the U.S. Patent and Trademark Office.
- Exhibit leadership by example, effort and attitude, including the ability to work independently.
- Excellent communication, and analytical skills.
- Strong attention to detail and problem-solving abilities.
