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Our client, a global company in New Jersey recognized by Forbes Magazine as one of America’s Best Employers, is seeking an experienced attorney for the role of Intellectual Property Counsel. In this role you will provide a broad range of business-oriented IP services for, and build partnerships with assigned R&D and business units at the Company. You must possess in-depth knowledge of IP transactional practice and of US patent and intellectual property law.
Transactional Responsibilities, handled directly:
Collaborate with R&D and business unit clients to timely identify all agreements necessary to implement their respective objectives.
Advise R&D and business unit clients on IP contract issues and interpretation.
Conduct IP due diligence for M&A transactions.
Review, negotiate, and draft a broad range of contracts such as:
Confidentiality agreements with universities, research organizations, commercial partners and private sector institutions to implement long-term strategic and commercial objectives for the subject IP;
Material transfer agreements covering early-stage, proprietary chemistry and/or biotechnology materials and/or products;
Joint development agreements and other collaborative agreements;
License agreements, including complex, cross-border in- and out-license agreements, cross-license agreements, development license agreements, and license and supply agreements;
Technology transfer agreements;
IP asset acquisition agreements; and
IP asset divestiture agreements.
Non-Transactional Responsibilities, handled directly, with the global IP team, and/or through management of outside counsel:
Advise on patentability, validity, and infringement.
Serve as senior IP advisor to your assigned R&D and business unit clients.
Manage patent portfolios.
Develop and implement patent strategies to protect innovations.
Conduct freedom-to-operate assessments.
Effectively communicate with people at all levels of the Company, including communicating complicated technical and legal issues to non-technical personnel, to enable critical decisions on IP and IP litigation matters.
Work closely with other members of the IP, Legal and other functions, e.g., Tax, Insurance and HR, on regional and global levels.
Provide IP litigation support, working in conjunction with the Company’s US litigation attorneys and global IP team.
Conduct and/or coordinate IP training, working in conjunction with the Company’s US commercial attorneys and global IP teams.
JD degree and a license to practice law in at least one US state is required.
Admission to practice before the USPTO is required.
Minimum 8 years of IP practice is required.
In-house counsel experience is preferred.
Experience in one or more fields of lubricant oil additives, compounded lubricants, plastic additives, water treatment chemicals, paper chemicals, kaolin processing and applications, and personal care is preferred.
Salary commensurate with experience. Bonus eligible position.
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