Our premier global client seeks an Intellectual Property attorney to join its Philadelphia based top-flight legal team to work in a fast-paced environment on matters of consequence. The ideal candidate will have significant experience in pragmatic, strategic, business-astute counseling on patents, trade secrets and trademarks, as well as related contract matters. The candidate should have excellent drafting, communication, and negotiation skills.
This vital role provides an ideal professional environment for a confident, proactive, commercially-minded lawyer with high levels of autonomy balanced with organization and team needs, and an ability to manage challenging, significant matters.
Key Responsibilities:
Work with R&D and business personnel to lead management of patent, trademark and trade secret matters for a significant segment of a growing business;
Guide drafting and prosecution of international patent applications to obtain commercially significant patent protection for technology developed in the responsible R&D segment;
Provide freedom-to-operate opinions and guidance, based on legal, business and technical considerations;
Work with R&D personnel to monitor, investigate and challenge third-party patent developments;
Develop relationships with R&D personnel to foster a culture of invention disclosure, patent development and protection; Provide strategic patent and trade secret advice to R&D and business personnel;
Prepare and counsel R&D and business personnel on Intellectual Property provisions and agreements including confidentiality, material transfer, research, licensing and joint development agreements;
Assist in enforcement and defense of patent, trademark and trade secret rights, as well as other IP disputes with third parties;
Guide outside counsel;
Set and manage IP budgets in responsible R&D segment;
Actively support trademark strategy in responsible business segment, including trademark acquisition, clearance, maintenance and enforcement.
Required Education:
Law degree from an accredited US Law school
Strong academic credentials, a state bar admission, and admission to practice before the US Patent and Trademark Office;
A degree, preferably advanced, in a chemistry- or biology-related discipline;
Qualifications & Skills:
Preferred 5-7+ years relevant legal experience, comprised of law firm or in-house counsel experience, preferably both;
A proven track record of serving as a trusted Intellectual Property business advisor, preferably in international settings;
Substantial, substantive experience drafting and prosecuting US and international patent applications, having drafted, filed and prosecuted to allowance a substantial number of international patent applications;
Significant involvement enforcing and defending IP rights;
Experience evaluating desired trademarks for use and registration, a plus;
The ability to spend at least one day per week at the R&D site in Newark, Delaware; The ability to travel as necessary, approximately 10-15% of the time;
Superior communication skills, both written and verbal, to effectively address and influence all levels of the organization, including the ability to effectively communicate how an issue impacts the Company from both a business and legal perspective;
A business partner, who likes working side-by-side with R&D and business people, is receptive to opposing views and can accept and implement the ultimate decision;
Full vaccination against COVID-19 is a condition of employment. Full vaccination means that two weeks have passed since the second dose of a two-dose vaccine (i.e., Pfizer or Moderna) or two weeks after a single dose of a one-dose vaccine (i.e., Johnson & Johnson/Janssen). All applicants will be required to show proof of their vaccination status upon receipt of an offer of employment. Exemptions will be granted only to those applicants who are unable to take the vaccine due to medical reasons or a sincerely held religious belief. Our client will work with those who apply for and are granted exemptions in an effort to identify reasonable accommodations which will permit those individuals to fulfill the responsibilities of their positions.
