Intellectual Property Counsel

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Intellectual Property Counsel
The candidate will prepare, review and pursues patent and trademark applications. Guide and assist business units and staff with intellectual property issues related to client and vendor contracts, specifically software licensing issues. Implement and maintain patent review committees and incentive programs for inventions and technical papers. Participate in the evaluation of technical design related to new product development and legacy improvements with an emphasis on patentability, freedom of operation and product liability matters. Review and draft commercial contracts related to field testing/prototype roll-out, joint development programs and independent contractor management. Prepare and/or review infringement opinions. Conduct intellectual property due diligence on potential acquisitions. Prepare and examine Nondisclosure Agreements and advises staff on related matters. Provide litigation support and management for intellectual property matters. Lead foreign and domestic patent counsel. Provide assistance to business unit general counsel on request from time-to-time. Should have a Bachelor's degree in Engineering with an emphasis in Systems or Software Design; Industry work experience preferred. A Juris Doctorate from an accredited law school. Should have 4-8 years of law firm and/or corporate law experience. Have a strong emphasis on patent prosecution and software licensing. Admitted to the USPTO. Licensed to practice in at least one state or the District of Columbia.

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