The Assistant General Counsel – Intellectual Property will provide strategic vision as well as daily execution and oversight in managing the Company’s current and future intellectual property assets. The Assistant General Counsel will be an integral working partner with the Company’s Chief Technology Officer and business units worldwide in the areas of portfolio management, intellectual property business transactions, dispute and litigation, licensing, patent prosecution strategies, and due diligence.
The Assistant General Counsel’s responsibilities will include:
- Lead strategic initiatives concerning intellectual property.
- Provide patent licensing, transaction and agreement support (including joint development agreements and strategic partnerships).
- Provide general commercial advice in all areas of the company’s operations, including contract negotiation and review.
- Performing IP due diligence and developing contracts for divestitures, acquisitions, investments, joint ventures and IP licensing arrangements.
- Responsible for patent infringement matters and freedom to operate evaluations.
- Develop and support Intellectual Property Review Committee.
- Manage invention disclosure process and work closely with internal clients on all matters relating to invention and patent prosecution strategies.
- Provide expertise and training relating to intellectual property policies, procedures and topics.
- Direct and oversee outside patent and IP litigation counsel.
- Manage global intellectual property budget.
Education, Experience and Knowledge:
- D. from an ABA accredited law school.
- Bachelor of Science, or an equivalent degree, in electrical or mechanical engineering or another related field.
- Current membership in any state bar.
- USPTO admission is valued.
- Must have excellent knowledge of U.S. and foreign patent, trademark and trade secret laws and practices.
- 10+ years’ experience in intellectual property law practice within a law firm and/or in-house.
- Should have experience in software or with high tech firms.