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Reporting to the Vice President & General Counsel- Commercial Transactions, the Director – Global Intellectual Property will be responsible for intellectual property strategies and will oversee and manage entire portfolio including aspects of patents, utility models, trademarks, technology, and trade secrets/confidential information.
The candidate will oversee the management of a global patent and trademark portfolios. The position will counsel on all intellectual property issues in agreements and business relationships and also manage IP training for all functions.
The successful candidate will lead and develop an efficient, high-performing and experienced team comprised of patent attorneys, paralegals, other professionals and administrative assistants. Looking for a thought leader who can drive creative and practical legal guidance in a world-class legal organization.
Provide strategic counsel to the business regarding the competitive intellectual property landscape for the current global product and brand portfolio and future plans.
Provide strategic guidance in global patent and trademark matters; providing pragmatic and sound advice in a manner that facilitates business results.
Supervise, develop, and manages internal global team of patent specialists, paralegals and patent attorneys, and outside counsel in the effective and efficient preparation and prosecution of patent and trademark applications around the world.
Develop and build relationships with key business partners and global R&D teams, as well as outside counsel, to ensure understanding of the strategic direction of business groups regionally and globally necessary for the provision of legal services.
Actively serves as a leader, positive role model and teacher regarding mission, vision, and values.
Create and implement fiscally-responsible, global patent and trademark strategy with consideration of resources, including developing, maintaining and optimizing a broad global portfolio in a cost-effective manner.
Drive freedom to operate and clearance reviews with proactive evaluation and resolution of clearance issues to align with changing business priorities.
Work closely with other attorneys in the Legal Department
In conjunction with members of commercial and litigation team, investigate IP enforcement opportunities, manage IP disputes (including cancellations, oppositions and other proceedings as well as other claims impacting the business globally), efficiently manage outside counsel and drive results that reflect business priorities and contain necessary protections for the company.
Implement training and design processes to enhance the management and protection of IP.
Support intellectual property related M&A due diligence activities.
Minimum of 12 years qualified to practice law before a state bar in the USA, and the United States Patent and Trademark Office.
Significant and proven post-qualification experience working as a registered patent attorney with an IP firm or an IP group within a general practice firm and within an in-house IP department of a multi-national company, with patent experience in a product development/ R&D/ manufacturing environment.
Experience with drafting, negotiating, implementing and enforcing licensing, technology transfer, and IP related M&A activities, including due diligence.
Previous experience effectively and efficiently leading and managing global team(s), outside counsel, and legal spend and budget.
Ability to build relationships and positively influence outcomes.
Experience successfully driving operational excellence, process improvements, resource efficiencies and change management in provision of legal services.
Ability to make solid judgment calls under pressure.
Varied exposure to substantive legal practice areas typically encountered by large companies, in particular in areas of commercial transactions, litigation and regulatory counseling.
Excellent communication, strong team management and leadership skills.
Demonstrated ability to collaborate effectively with others.
Ability to translate strategic goals and objectives into strategies and actioned priorities.
Ability to find creative solutions to meet legal requirements and business needs.
Ability to multitask, handle many conflicting priorities and move forward on projects notwithstanding constant interruptions.