Intellectual Property Counsel or Agent

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.

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.

• 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.

• 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…