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We are conducting an exclusive search for our long-standing energy client who is seeking an INTELLECTUAL PROPERTY & TECHNOLOGY TRANSACTIONS attorney with a minimum of 7 years experience for its Houston office. Our energy client is an international publicly traded corporation and an industry leader.
This position is for a new cutting edge business unit. It offers an opportunity to serve as the leading IP/technology transactional lawyer for the company. The attorney hired will do a variety of quality work and assume significant responsibility and a leading role with a stable, premier corporation with a collegial environment.
The attorney hired will work closely with a wide range of business units and interact with senior commercial management, including the GC and CEO.
Manage all legal aspects of intellectual property (IP) related to the company’s operations; provide IP legal services and advice in support of development of new technologies.
Manage IP commercial responsibilities, including drafting, reviewing, negotiating and interpreting a broad range of contracts, including confidentiality agreements, license agreements, commercialization agreements, joint development agreements, university agreements and software agreements.
Assist with technology-focused transactions and obtaining, protecting, licensing and enforcing IP rights, particularly in the context of mergers, acquisitions, investments, joint ventures, project development and day-to-day business transactions.
Conduct IP due diligence for mergers, acquisitions and major commercial transactions.
Draft domestic and foreign patent applications, manage trademarks and copyrights, provide product clearances and freedom-to-operate opinions, and conduct patent landscape analyses.
Develop a process(es) for, among other things, evaluation and approval of proposed new patents; conduct IP training for company employees.
Collaborate with technical and business personnel to identify IP issues and coverage necessary to address business objectives and to protect key technologies (including securing of patents).
Counsel management regarding IP legal risks, and manage claims and litigation regarding patent, trademark and copyright infringement and other IP-related matters.
Doctor of Jurisprudence (J.D.) from a top tier national law school.
Minimum seven (7) years of experience years of experience as a practicing IP lawyer, preferably with experience in the oil and gas and/or chemical industry at a top-tier law firm &/or in-house in an IP/technology transactions role.
Member of the Patent Bar
Strong academic credentials and a stable work history.
Excellent interpersonal skills.
Ability to work with senior commercial managers.
Additional Desired Qualifications:
Licensed to practice law in at least one jurisdiction.
Desire to learn about developing technologies in a dynamic environment.
Experience structuring and negotiating IP-related agreements and transactions with universities, governments and non-profits.
Qualified candidates, please forward your resume ASAP in word.doc format to Sharon E. Gerber, Esq. by email to firstname.lastname@example.org
Please reference: "IP/TECHNOLOGY TRANSACTIONS-SENIOR COUNSEL-HOUSTON” in the subject line of the submission.
Please include work and cell contact numbers.
Unfortunately, due to the anticipated volume of resumes, we are often unable to respond to each candidate. We will contact you IF your background is a fit prior to submitting your resume.