Principal Counsel

Job Overview:

The Principal Counsel is responsible for interpreting internal or external business issues and recommending best practices. They will be tasked with solving complex Counsel-related problems and will work independently with minimal guidance. The Principal Counsel may be responsible for leading functional teams or projects and is regarded as a specialist in the field of Counsel. As such, they must have in-depth expertise in Counsel as well as broad knowledge of the Counsel discipline within the Legal function.

Key Tasks and Responsibilities:

• Develop and maintain an understanding of the business and technology of the assigned business unit(s), as well as associated patent portfolios
• Identify Intellectual Property (IP) risks to assigned business units and manage them in collaboration with the Senior Director/Chief IP Counsel  
• Negotiate and draft IP-related contracts such as NDAs, technical service agreements, and licenses
• Review and advise the company on IP-related risks in complex, high-value transactions
• Lead patent committee meetings for assigned portfolios
• Efficient exercise of control over outside counsel to minimize external costs
• Assist inventors with the writing and submittal of invention disclosures
• Instruct inventors on legal requirements for a patentable invention
• Advise inventors on data and other information needed to increase the patentability of inventions
• Critically review and evaluate submitted invention disclosures
• Perform and evaluate patentability searches
• Provide support for freedom-to-operate assessments and IP enforcement matters
• Maintain expertise in patent laws/regulations and general knowledge of patent laws in at least some foreign jurisdictions
• Prosecute patent applications and/or manage outside counsel on the prosecution of patent applications

Essential Qualifications and Education:

• Bachelor's degree in Chemical Engineering, Petroleum Engineering, Chemistry, or similar
• Advanced science degree desirable
• Bar registration; registered to practice law
• 4 to 6 years of law firm experience drafting and prosecuting patent applications and managing global patent portfolios; ability to independently prepare and prosecute patent applications
• Thorough understanding of Patent Cooperation Treaty patent laws/regulations and good knowledge of at least some foreign patent laws and practices
• Some experience in drafting IP-related contracts along with a desire to expand upon existing experience
• Excellent written and oral communication skills, including the ability to effectively communicate with business leaders
• Outstanding analytical skills with a reliable eye for quality and detail
• Ability to manage priorities and deadlines in a fast-paced environment with myriad business pressures
• Ability to think beyond the rules of patent filings and prosecution and focus on the practicalities and context of business needs
• Ability to work well within a team, taking direction and providing leadership as needed

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