Intellectual Property Attorney - IT Staffing
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Intellectual Property Attorney

Intellectual Property Attorney

Contract
   |   
Katy, Texas 77493
   |   September 14 2018

Description

This position is a contract position for a global company.

Job Description:

The Intellectual Property Attorney serves as an integral member of a technology team, providing IP legal services and advice in support of new product development, manufacturing, and software development. The successful candidate will have strong patent prosecution experience, an understanding of freedom to operate, and enjoy learning new technologies in a dynamic environment. The right candidate will be able to anticipate IP needs and partner with engineering, software, and maintenance modelling experts to secure a competitive advantage and protect disruptive technologies.

Qualifications:

  • Law degree (JD or equivalent) and university technical degree required, preferably in mechanical engineering, chemical engineering, electrical engineering, or physics 
  • Minimum 3+ years of patent prosecution experience before the USPTO 
  • Experience working for a multinational company or representation of a multinational company preferred 
  • Previous experience working in the Oil & Gas industry

Responsibilities:

  • Responsible for an Intellectual Property docket with an emphasis on timely capture of new technology and tailoring the portfolio to reinforce technology roadmaps
  • Prepares and prosecutes patent applications for a global patent portfolio
  • Drafts and negotiates development agreements, confidentiality agreements, collaboration agreements, and consulting agreements
  • Provides IP review and analysis through all phases of product development
  • Partners with engineering to secure new invention disclosures and recommends appropriate disposition to management
  • Advises management of the relevant technology team on IP risk issues
  • Conducts intellectual property training and counsels management on IP legal issues and Company policies
  • Supports IP counsel in enforcement matters involving the technology team
  • Monitors intellectual property activity in relevant technology areas