Assistant General Counsel – Intellectual Property

We have been retained by our client, a publicly traded company, for an exceptional opportunity. They are seeking an Assistant General Counsel – Intellectual Property. As a member of the Legal Leadership Team and working with the General Counsel and the Director of Innovation, the Associate General Counsel - Intellectual Property will manage client's  Intellectual Property risk by providing leadership and advocacy on all intellectual property matters, including patent generation, management of client's patent portfolio, IP licensing and IP litigation.
Your key responsibilities will include:
 

· Leading a team of attorneys and patent agents within the Intellectual Property function.· Providing leadership for and supporting the General Counsel on all intellectual property matters.· Providing counsel regarding legal obligations, risks, potential violations related to intellectual property and escalate as required.· Identifying and managing the relationship with external legal counsel for intellectual property matters.· Participating in and driving the development and direction of client's Intellectual Property strategy.· Providing legal and business strategy for Intellectual Property. · Supporting the AGC for litigation on all intellectual property litigation, arbitration and settlements.· Preparing the budget for the Intellectual Property legal function.· Overseeing the evaluation of inventive concepts for IP protection, including:o   (1) Reviewing prior art and developing overall filing strategieso   (2) Conducting patentability · Reviewing and managing patent applications to protect client's innovations and discoveries.· Providing trademark, copyright and trade secret counsel as needed.· Providing infringement, validity and freedom to act opinions.· Selecting and managing outside counsel supporting various aspects of client's intellectual property initiatives.· Reviewing confidentiality, license, joint development and other agreements.· Monitoring compliance with client's copyright, trademark, internet and social media policies.· Providing general intellectual property legal advice. 

The ideal candidate will have:

14+ years of relevant primary experience in intellectual property rights litigation, with secondary experience in intellectual property rights and intellectual property commercial agreements.A JD from an accredited US university or equivalent Canadian law degree from an accredited Canadian university.Be a current member in good standing in a relevant bar association, with a preference on licensing in Alberta, Texas or New York.·         Preferred, but not required – have a background in chemistry or chemical engineering, including B.S. (or advanced degree or equivalent technical experience) in Chemistry or Chemical Engineering.Be able to demonstrate an ability to resolve complex and contentious commercial matters skillfully. Have effective negotiation, interpersonal, conflict resolution and communication skills (verbal/written).Have previous leadership experience, including leading multi-disciplinary teams.Have strong business acumen and a commercial mindset.
This position will be highly compensated with a robust benefit package. This position can be based in a number of corporate locations, and there is a chance they may agree to a remote location. Interested and qualified candidates should either apply to this role directly, or send your resume in confidence to: jack@kinneyrecruiting.com