Description:

General Purpose of the Position
Responsibility for the provision of legal services to the Company's business units related to intellectual property matters.

Essential Duties and Responsibilities:

Perform IP functions for the company and its subsidiaries, including the Company's worldwide patent, trademark, copyright and domain name portfolios.
Work closely with business teams to understand products, identify innovations which are patentable, and draft and prosecute U.S. patent applications.
Manage the preparation and prosecution of foreign patent applications and the international patent portfolio.
Prepare PCT patent applications based on U.S. filings, formal drawings for patent applications, and Information Disclosure Statements and other patent-related documents.
Work closely with Marketing to understand new product identifiers and service marks.
Prepare and prosecute U.S. trademarks applications and manage the preparation and prosecution of foreign trademark applications and the international trademark portfolio.
Manage protection of company trade secrets, including maintaining and updating employee confidentiality agreements and company NDA policies and guidelines. Review commercial NDAs.
Evaluate risk associated with third-party patents and perform infringement and validity analysis.
Manage IP-related litigation, patent and trademark opposition and challenge proceedings, and dispute resolution.
Perform patent and trademark clearance searches and draft opinions.
Negotiate patent and trademark assignments and licenses.
Perform IP due diligence for business acquisitions and transactions.
Negotiate and draft legal documents including joint development agreements, license agreements, technology agreements, software licensing agreements, sponsorship agreements, non-disclosure agreements, and litigation settlement agreements.
Negotiate and draft IP-related provisions for supply and purchase agreements.
Monitor legislative and regulatory developments in the IP field.
Prepare and conduct IP-related training for the business teams.
Review and advise business teams on software/IT service contracts and disputes.

Skills and Abilities Required:

Demonstrate sound judgment and excellent legal analytical skills.
Strong orientation to detail work and ability to synthesize details.
Superior communication skills, both oral and written, with the ability to explain complex IP matters to non-lawyers in plain English and succinctly.
Sense of urgency and willingness to make tough decisions, with a thorough approach to managing issues that often involve competing interests.
Strong relationship builder who gains the trust and loyalty of the legal department as well as the confidence and acceptance of the business team and other constituencies.
Focus on service to clients, assuring the highest level of quality legal counsel in all areas of responsibility.

Education and Required Experience

Undergraduate or graduate degree in engineering, preferably in mechanical, electrical, or chemical engineering (engineering degrees in other technical fields will be considered).
Doctor of Jurisprudence from an accredited institution.
At least 7 years of practice as a patent attorney, including private practice at a major law firm. Prior in-house experience is a plus.