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Leading company in the chemical industry is looking for a Senior Intellectual Property Counselto join the team in the company’s Northern New Jersey office. The ideal candidate will work closely with the businesses to help facilitate their success. Responsibilities:
Working with the busienss units in researching and providing guidance and advice on a number of corporate issues, including contract interpretation, bankruptcy, and other matters;
Overseeing and managing outside law firms in the drafting and prosecution of patent applications in the U.S. and globally;
Overseeing and managing outside law firms handling trademark matters;
Gathering information, negotiating, drafting and revising a variety of license agreements, confidentiality agreements and other IP related agreements;
Overseeing the European patent opposition process for both (a) defending company patents; and (b) challenging the validity of competitor’s patents;
Overseeing the preparation of various formal and informal legal opinions (e.g., freedom to practice; patent clearance; patent validity; patent ability, etc.);
Overseeing and managing internal staff (currently one patent agent and one IP transactional paralegal);
Counseling internal clients on the above on a global basis, with input from local/outside counsel as needed;
Assist in due diligence efforts on proposed business transactions;
Review business, scientific, commercial and sales/marketing documents/communications and advise on appropriate strategy/language to minimize intellectual property risk while maximizing business benefit;
Other duties as assigned.
JD required from accredited law school;
Admission in good standing to NJ State Bar;
Experience in preparation and prosecution of patent applications;
At least 8-10+ years of progressive experience including at least 5 years in an equivalent role;
International business experience preferred;
10-15% travel is required;
Proven ability to work independently and autonomously, as well as part of a team;
Proficient computer skills, including working knowledge of Microsoft Office Suite (e.g., Word, Excel, MS Office, etc.)
Internal Number: IPCNSL 1073
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