We are seeking candidates that have experience working on a variety of technology and commercial transactions involving intellectual property and data security. As a recognized IP specialist, you will work closely with our Digital & Technology group and various business units on complex assignments that will have a high impact to the business.
ESSENTIAL DUTIES AND RESPONSIBILITIES
Act as a valued strategic partner to the business to devise and execute successful IP enablement and protection strategies
Draft, review and negotiate a wide range of technology and commercial contracts including licenses, SaaS agreements and agreements related to data transference and protection
Manage the clearance, prosecution and maintenance of the Company’s trademark and potentially emerging patent portfolios
Lead IP due diligence in M&A and other transactions
Provide counsel to the business on licenses, collaboration agreements and other third party transactions impacting the protection, acquisition, transfer or other disposition of IP rights
Lead investigations into encroachments on the Company’s IP rights and provide guidance on potential enforcement actions
Counsel the business on evolving developments in global IP law, recommending policy / process changes as needed to achieve business goals and efficiencies
Other duties as may be assigned
DISCLAIMER This job description has been designed to indicate the general nature and level of work performed by employees within this classification. It is not designed to contain or be interpreted as a comprehensive inventory of all duties, responsibilities and qualifications required of employees assigned to the job.
EDUCATION, BAR ADMISSION and EXPERIENCE
Juris Doctorate from a top law school, applicable state bar membership and a minimum of 6-7 years of experience in IP practice in a major law firm
Extensive experience preparing, reviewing and negotiating complex agreements, particularly licensing and other technology transaction agreements
Experience managing a comprehensive intellectual property portfolio, including domestic and foreign marks
Experience leading investigations and negotiations to resolve trademark or other IP disputes
Understanding of U.S. patent and trade secret laws and of United States Patent and Trademark Office practices and procedures
Facility with working collaboratively with management and business teams to solve complex IP problems
Demonstrated thought leadership, organizational skills and business judgment
Strong interpersonal and oral communication skills, charisma, decisiveness, poise
Strong written communication skills, especially persuasive writing
Responsiveness and quality service delivery to the corporate client is paramount
Internal Number: 18015808
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