Intellectual Property Counsel

Rochester, NY
Full Time
Job #: 2018-3071 Exp.: 3+ Years
We are hiring an IP Counsel for our Rochester, NY Location. This is a great opportunity for some one to join a small, but busy team. In this role you will wear multiple hats each day and no day will ever be the same. Sound great? The IP Counsel is a member of the FUJIFILM Holdings America Corporation (“HLUS”) Legal Department reporting to the Chief IP Counsel. The IP Counsel will work on intellectual property matters for HLUS and its subsidiary companies, both independently and in collaboration with members of the HLUS Legal Department and outside counsel.

External US
  • Counsel inventors and management at Fujifilm companies on new patent filings and work with outside patent counsel to prepare and file necessary documents.
  • Review office actions and other correspondence from the patent office and serve as a liaison between outside patent counsel and companies in responding to such correspondence.
  • Perform patent searches including patentability studies, freedom-to-operate and state-of-the-art studies.
  • Analyze issued patents and applications and advise Fujifilm companies regarding potential issues.
  • Support litigation by serving as liaison between litigation counsel and Fujifilm companies and gathering necessary information and documentation.
  • Drafting and negotiating various IP related agreements, including license agreements and nondisclosure agreements.
  • Counsel Fujifilm companies on Trade Secrets, Trademarks, Copyright and domain names.
  • Provide intellectual property training to Fujifilm companies.
  • Keep abreast of new legislation and developments in the field of intellectual property.

  • Juris Doctor (J.D.) degree from an accredited law school
  • Bachelor Degree in a technical discipline, Electrical or Chemical background is preferred.
  • Admittance in good standing to at least one state bar (NY Preferred)
  • Admittance to practice before USPTO (Patent Bar)

Three years of experience as patent attorney for a law firm or in a corporate law department

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