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Glossary > Intellectual Property Counsel

Role Purpose

Provide advice and guidance on intellectual property matters including IP strategies, protection, licensing, freedom to operate and technology agreements

Typical Work Activities

  • Provide legal counsel on intellectual property matters.
  • Monitor and analyze competitive intellectual property. Develop and implement strategic intellectual property initiative
  • Draft and negotiate agreements and contracts.
  • Review and evaluate publicly available technical and marketing activities of others and, as allowed by law, analyze existing technology and intellectual property positions of others
  • Collaborate with patent agents on developing intellectual property protection strategy
  • Keep abreast of changes and trends in the law, rules of practice, and court decisions related to the company’s IP position
  • Provide advice and guidance on technology agreements and strategic alliances

Educational Requirements

  • Doctorate of Jurisprudence required. Master's or Ph.D. degree in biological or chemical sciences preferred
  • License to practice law and registration to practice before the Country Patent and Trademark Office required.

Skills, Knowledge, and Experience

  • At least 15 years diverse experience in the field of intellectual property law
  • Experience in patent prosecution, patent opinions, agreements, due diligence in transactions having an intellectual property focus
  • Experience in negotiating and drafting technology licensing agreements
 

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