Sr. Counsel, Intellectual Property

Houston, TX
Full Time
10-17-2019
Practice Areas: Intellectual Property, Transactional Job #: 9663BR Exp.: 10+ Years
Description:
Job Purpose:
Manages all aspects of the global intellectual property estates for the assigned business units. Implements global intellectual property (IP) strategies by developing plans to align with the business objectives for the assigned business units. Review technical developments to ensure compliance with corporate IP policy. Review intellectual property estate for the assigned business units to add value to technical developments and enhance progress towards business objectives. Provides global legal and IP counselling and contract support, including IP agreements and licensing support, increasing business unit’s IP awareness for invention capture and infringement risks, managing business unit’s global patent portfolios to enhance the value of SABIC technology. Drives a culture of compliance throughout the business.

Responsibilities:
  • Develops and implements global Intellectual Property strategy (patent procurement and management) for assigned business units in collaboration with T&I, Product Management, and Senior IP Counsel for achieving SABIC’s business objectives. Manages IP budget for responsible businesses. Manages the global IP estates to achieve business objectives. Manages trademarks for assigned business units.
  • Advises business on structure of business arrangements. Negotiates and executes IP-related contracts with global customers and suppliers (NDA, JDA, DAA, licenses). Structures, negotiates and drafts contracts to support global licensing activities
  • Implements freedom to practice processes across SBUs to minimize patent infringement risk
  • Provides training to increase business’ “IQ” on IP matters and drive culture of compliance
  • Handles patent litigation activities with in-house litigation specialists and outside counsel. Manages costs of outside counsel
  • Assist in IP due diligence for M&A activities
  • Reconciles IP strategies of varying IP laws around the world with technology and business objectives
  • Executes transactions covering multiple business units globally
  • Navigates increasing challenges within the regulatory environment, e.g., export control
  • Manages IP estates for assigned business units within guidelines from Lead IP Counsel and corporate objectives (reviewing several hundred patents in numerous countries to determine impact on business objectives and competitive position)

Requirements
Experience & Education Requirements:
  • Minimum of ten years relevant experience in intellectual property and transactional support
  • JD required
  • Licensed and in good standing with the Bar Association (state bar)
  • Registration with the US Patent and Trademark Office (patent bar)
  • Undergraduate degree with relevant technical focus (e.g., chemistry, chemical engineering, materials science) required
  • Advanced degree preferred with relevant technical focus (e.g., chemistry, chemical engineering, materials science)
  • Demonstrated communication skills with management

Eligibility Requirements:
  • You must submit your application for employment online to be considered. Please submit your resume using the apply online option on this page.
  • You must be 18 years or older
  • You must be willing to take a drug test as part of the selection process
  • You must be willing to submit to a background investigation as part of the selection process
  • You must have unrestricted authorization to work in the United States

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