Intellectual Property Counsel

Overview

Job Summary

The Intellectual Property (IP) Counsel is responsible for providing high quality IP service to the entire Werfen organization. The position reports directly to the Chief IP Counsel.

The IP counsel is responsible for strategically establishing patent portfolios in different business areas, perform freedom-to-operate, assist with IP due diligence, support internal clients and manage outside counsel, and work closely with both the business and the Chief IP Counsel on a daily basis.

Responsibilities

Key Accountabilities

• Initiate, improve, and implement IP strategies and processes across Werfen technology centers to optimize IP asset procurement
• Identify strengths and weaknesses and set priority to selected technical areas for IP procurement
• Update databases and provide IP statistics information to business
• Continue to learn the ever changing IP laws and practices in major jurisdictions and apply such knowledge effectively in daily work
• Perform freedom-to-operate studies and provide high quality work products to business
• Effectively, efficiently, and independently manage outside counsel to ensure high quality prosecution work product within a reasonable budget
• Perform trade secret survey and strategize and implement trade secret policies adapted to local laws within Werfen entities
• Assist with trademark portfolio management
• Assist with IP related agreements
• Support software licensing matters and other day-to-day IP related matters, including responding to client inquries or perform other assigned tasks as they arise
• Support IP due diligence
• Performs other duties and responsibilities as assigned.

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Networking/Key relationships

Establish and maintain good working relationships with marketing, R&D, and other stakeholders within the business.

Qualifications

Minimum Knowledge & Experience required for the position:

• Bachelors degree in science or engineering, preferably in biological sciences, required.
• JD from an accredited U.A. law school and membership in good standing of state bar re-quired.
• Admission to practice before the U.S. Patent & Trademark Office required
• Minimum of 5 years of relevant experience gained in a law firm required. In-house experi-ence is a plus but is not required.
• Solidly trained in patent drafting and prosecution, and currently able to independently draft and prosecute without senior attorney’s supervision.
• Well-versed in patent law in major jurisdictions in software, hardware, and diagnostic as-says.
• Substantial freedom-to-operate (FTO) experiences, including searches, evaluations, and work product generation.
• Preferred training or experience relevant to life sciences, chemical analysis, or materials characterization and strong technological aptitude and inclination to learn and work with a range of technologies.

Management has the discretion of substituting relevant work experience for a degree and/or making exceptions to the years of experience requirement.

Skills & Capabilities:

• Proven ability to establish a high degree of credibility, respect and trust at all levels including with technologists, scientists, managers and executives.
• Strong professional and personal communication skills, capable of dealing with a wide range of people.
• Be accountable for the responsabilities taken or work assigned.
• Effective planning and organizing skills to prioritize key areas of responsibility, tasks and projects. Ability to prioritize and manage multiple projects.
• Strong team player who is both committed and flexible.
• Combination of in-depth legal knowledge and commercial awareness of the business issues facing the organization and the ability to deal with problems in a practical manner.
• The successful candidate must also exhibit the highest integrity, excellent judgment, and the ability to proactively recognize and effectively communicate legal issues to patent, legal, and senior management
• Be energized by challenging and interesting legal work, technical and scientific matters, and novel business problems.
• Be keenly interested in and curious about technology and eager to work closely with technology development professionals.
• Be able to work cross-functionally to develop knowledge to enhance support of business needs.
• Have excellent drafting and very clear communication skills.
• Must be able to multitask and prioritize in a dynamic work environment.
• Must be able to independently lead projects and complete tasks timely with high quality work products and with minimum supervision.
• Must be professional, thoughtful, respectful, flexible, responsive, and accountable.
• Must be willing to work on not only high-risk matters but also daily matters including looking up patent status or generating statistics or responding to client inquiries on vari-ous matters.
• Must be willing to adapt to the Werfen business environment, learn about business per-spectives, and practice within.
• Must be able to think strategically but also work on details meticulously.
• Must be able to initiate projects as needed and follow through implementation.
• Must be able to handle matters in a wide range of technology fields, curious, and willing to take on new tasks and continuously learn.
• Must stay up to date with evolving IP laws in major jurisdictions.

Travel requirements:

Up to 5% travel required, mainly in the US to other technology centers.