Description:

Description:
Position Summary:
The Senior Corporate Counsel, Intellectual Property is responsible for providing legal counsel and support to multiple business units on intellectual property matters. The Senior Corporate Counsel, Intellectual Property will support the initiatives of the intellectual property department, as well as work closely with business leaders to develop and implement intellectual property strategies. This role will provide advice and support on a wide range of intellectual property issues, including patents, trademarks, copyrights, and trade secrets, and manage multiple outside counsel.

What You'll Do as Senior Corporate Counsel, Intellectual Property
  • Preparation and prosecution of patent application.
  • Oversee and manage outside counsel in the filing and prosecution of patent applications.
  • Oversee and manage a portfolio of trademarks, copyrights, trade secrets, and other intellectual property assets.
  • Draft, review and revise agreements or clauses relating to intellectual property, development and/or research activities.
  • Conduct due diligence relating to possible corporate acquisitions, divestitures, joint ventures or other business initiatives.
  • Perform such other departmental or IP-adjacent tasks as requested by the GC or Deputy General Counsel.

The Experience, Skills and Abilities Needed

Required:
  • Law degree from an ABA accredited law school and active member in good standing of a state bar
  • Minimum 5+ years of experience in intellectual property law, either in a law firm or corporate environment
  • Admission to practice before the USPTO.
  • Extensive knowledge of USPTO and PCT rules, regulations, practice and forms.
  • The ability to perform research, and to share knowledge with and train others.
  • Experience conducting product clearances, freedom to operate and patentability searches, and formulating/communicating opinions on same.

Preferred:
5+ years of experience in intellectual property law, either in a law firm or corporate environment.

Skills:
  • Fluent in English, strong verbal and written communication skills.
  • Able to communicate effectively in the technical, legal and business environments, e.g., engineers, attorneys, marketing and sales, business management.
  • Must be flexible and able to work independently, handle multiple tasks, work collaboratively, think creatively, take initiative and respond quickly to changing priorities.
  • Must be creative and have a desire for constant improvement; willingness to challenge the status quo and conventional wisdom where appropriate.
  • Able to work in a collaborative teamwork style work environment and be willing to learn from/assist/support others.
  • Strong computer skills including an ability to utilize software including, Microsoft Office, the USPTO's EFS, AI-related tools, and STERIS's IP docket management system.