Director, Intellectual Property

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Job Description

The Company seeks a strong intellectual property attorney possessing considerable legal experience managing and setting strategy to protect and promote a portfolio of intellectual property.  They will be expected to interact closely with technology and business leaders across the Company.  This individual must be able to partner and effectively understand the needs and strategy to help drive business and legal solutions in the intellectual property arena. As a leading technology Company, this position will be responsible for promoting and protecting intellectual property as it is critical to the Company’s brand and economic model.   

 

Responsibilities  

Key responsibilities of the Director of IP include but are not limited to: 

 

• Driving the development and implementation of intellectual property interests and strategies in collaboration with senior leaders, engineers, and other teams, as well as ensuring that all IP-related activities are in conformance with the Company’s principles and values.  

• Demonstrates ability to translate key business and technology strategy into actionable steps to create and continuously strengthen the enterprise’s intellectual property position. 

• Managing a global patent and trademark portfolio based on a strategy developed with the General Counsel and internal business clients. 

• Providing IP legal guidance and direction to ensure management can make reasonable and informed decisions regarding legal operational risks.  

• Negotiating and advising on patent and trade secret aspects of intra group and third-party agreements, including licensing, confidentiality, and research and development agreements. 

• Advise Chamberlain on questions relating to patentability and infringement and freedom to operate.  

• Assisting in the management of outside counsel in the prosecution/defense of various IP legal issues worldwide. 

• Interpreting court decisions, conducting legal research, having knowledge of statutes and governmental regulations to provide legal advice on current and pending IP legal developments. 

• Conducting IP due diligence activities for in-licensing or acquisition projects.  

 

Qualifications & Skills 

• Juris Doctorate degree from an accredited law school.  

• Admission to a State Bar of any jurisdiction in the United States and licensed to practice in Illinois (or admitted to the Illinois Bar within a reasonable time following the commencement of the position). 

• Admitted to practice before the USPTO. 

• BSc or higher degree in mechanical engineering preferred. 

• At least 8 years of relevant experience, ideally gained in both law firm and in-house environments. 

• Experience in preparation and prosecution of patents worldwide, patent litigation, and opposition proceedings. 

• Experience in conducting freedom to operate analysis and advising businesses on proposed activities. 

• Expertise in structuring and negotiating IP matters in commercial contracts and transactions. 

• Strong analytical, strategic vision, decision-making, and problem-solving skills. 

• Demonstrated leadership skills and