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Job Details

Principal IP Attorney

Experience
12 yrs required

Location
Andover, MA, United States

Posted on
Sep 28, 2020

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Profile

Principal IP Attorney
Responsibilities: Oversight of US IP function and team with primary responsibility of carrying out global IP strategic goals in the US and implementing and facilitating intellectual property management and protection in the US. Create, facilitate, and implement all intellectual property management processes relating to US, guidelines, and tools in the IP organization, including IP advice relate to global health and safety business and North America Region. Provide leadership to IP Counsel and Patent Agent in US. Strategically support the product development process to ensure protection of IP as they invent new technologies and provide documentation for the preparation of patent applications and ensure relevant contractual provisions are in place to ensure transfer of ownership of IP for external developers. Also provide IP defense, contract creation, training of R&D and business teams as appropriate and provide design recommendations for current and future product and service offerings. Provide first-line support for all North American employees in need of legal advice regarding the proper use of confidential and proprietary information, trade secrets, trademarks, copyrights and patents. Perform freedom to operate (FTO) analysis and oversight of FTO process and analysis to ensure right to use and minimize legal risk in North America region. Collaborate with and provide strategic support to the General Counsel, NA regarding litigation defense strategy related to IP matters and all facets of litigation process, e.g., document review, discovery, trial, settlement including selection and management of external counsel in IP matters. Support General Counsel, NA and other business departments in IP related aspects of M&A transactions. Collaborate with and support and Legal & Compliance department on IP topics and corporate relevant, e.g., copyright, open source and unsupported software, attorney client privilege, including review, drafting, and negotiation of IP related contracts and provisions, as requested by General Counsel, NA or as identified in IP function and brought to attention of General Counsel, NA. Participate and support the Global IP and Legal teams on global matters impacting the US. Supervise and mentor members of US IP team on substantive IP and business matters, as well as administrative day to day oversight (e.g., time records, expense report approvals, and purchase order requests) Creation and conducting of IP training for employees regarding, IP policies, processes, and legal tenets. Performs other duties as needed and assigned.

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