The Director of Intellectual Property and Licensing, Associate General Counsel will report to the General Counsel and oversee the global patent and intellectual property portfolio of the Company, support the Company’s core product innovation group and assist in the development and execution of a technology licensing strategy with respect to the Company’s material science innovations in adjacent markets.
The Director of Intellectual Property and Licensing will work closely with and provide legal advice to the research and development and product innovation teams for automotive and non-automotive sectors. This position requires substantial knowledge of negotiation and drafting of technology agreements in industrial and consumer businesses, strong familiarity with coatings and polymer chemistry, substantial experience in chemical patent law and advanced chemical and material technologies, and the proven ability to efficiently communicate and work with Ph.D. level chemical, mechanical and other engineers.
- Primary Responsibilities:
- Creative negotiation, drafting and managing of various intellectual property agreements including non-disclosure and confidentiality agreements, joint development agreements, collaboration agreements, technology license agreements, and/or intellectual property terms of commercial agreements;
- Close collaboration with scientists, engineers and researchers and technical directors regarding new products, product innovation and improvements;
- Development and implementation of intellectual property protection strategies and related risk management;
- Management of state-of- the art patent searches for new product opportunities;
- Creation and management of processes for patent prosecution, patentability and freedom to operate/clearance studies and other activities to assist with developing and launching new products;
- Assistance with and review of invention disclosures, research activities and new product innovations;
- Management of drafting, filing and prosecution of patent applications, U.S. and foreign;
- Conduct IP-related due diligence in connection with mergers and acquisitions;
- Creation and management of processes for filing and prosecution of trademarks;
- Trade secret identification, documentation and protection;
- Strategic management of intellectual property portfolio;
- Interaction with and management of outside counsel, U.S. and foreign; and
- IP legal assistance, training and support for engineering, marketing, sales, purchasing, general legal and technology personnel and departments.
- Juris Doctorate degreerequired (registration before a state bar required);
- Registration to practice before the U.S. Patent and Trademark Office;
- A minimum of 10 years of experience in patent prosecution, technology licensing, product clearances, and ancillary areas, including IP litigation and dispute resolution; and
- Ability to work collaboratively with the business and staff functions, most notably R&D and product innovation team.
- Extensive knowledge of and experience with IP matters in the field of polymers and material science; and
- Extensive experience in a managing a high volume of intellectual property matters.
EEO Notice We are an Equal Opportunity Employer committed to a diverse workforce. Minority/Female/Disabled/Veteran/VEVRAA Federal Contractor