Scope of Position:
Meet business and corporate IP needs by providing a full range of IP services and counseling in the Emerging Innovations Group, including creating developing IP strategy and building and managing a portfolio of patents and other IP that advance the technical and commercial interests of the company. It is contemplated that this role would engage across several programs and technologies.
Key Accountabilities Include:
- Partners with the business to develop and execute IP strategies aligned with commercial and technical objectives
- Manages global patent portfolios from invention disclosure through enforcement and agency procedures, including preparation, prosecution and maintenance of Corning’s US patents and supervision of US and foreign outside counsel
- Performs risk assessment studies relating to business activities, new product plans, and commercial and technical strategies and provides legal opinions as to patent scope, infringement and validity
- Supports patent assertion, challenges, and litigation efforts, as appropriate
- Monitors the competitive IP space and works with competitive intelligence group for the relevant programs to identify potential infringing products
- Participates in M&A activities as appropriate
- Performs substantive transactional work, including, negotiation and drafting license, joint-development, sponsored research, material transfer, and other IP-related agreements
- Counsels the business on various legal matters, including competitor’s IP, public disclosure of information, what information can be disclosed at a trade show, what can be published etc.
- Provides departmental and Company-wide training and seminars on relevant IP and information management related topics
- Provides ad-hoc support to and maintains open communication with Law Department attorneys leveraging an extensive knowledge of relevant IP law and technical areas of expertise
- Mentors other professionals
- Participates in or leads improvement projects and Law Department initiatives.
Required Education and Skills:
- JD and member in good standing of a state Bar and registered to practice before the USPTO.
- BS and/or advanced degree in relevant technology (materials science, chemistry, physics preferred, but other technical backgrounds and experience will be considered); advanced degree preferred
- Excellent written and verbal communication skills
- Ability to identify and manage risks and recommend appropriate solutions consistent with the relevant risk tolerances of assigned business and the company
- Ability to reduce complexity to an actionable set of facts and decision points
- Ability to work independently and manage multiple simultaneous projects effectively
- Comfortable interacting with inventors, managers and senior leadership
- Excellent common sense and judgment
- Self-starter, team player, excellent attitude
Required Work Experiences:
- 6+ years as a practicing patent attorney (law firm experience preferred)
- Significant experience preparing and prosecuting patents, including supervision of foreign counsel
- Experience performing risk analyses and drafting infringement and validity opinions
- Substantive transactional experience