Intellectual Property Attorney

IP / Corporate Counsel

Job Title: IP / Corporate Counsel. The role will entail approximately 50% in IP (patent prosecution and portfolio management; trademark portfolio management) and 50% in general corporate and compliance matters.

Position: Full time. On location hybrid preferred but remote possible.

Reports to: General Counsel

Experience: 5+ of relevant experience at a law firm and/or as in-house counsel at a global company.

Role Responsibilities:

Advise, counsel, and participate in the development and management of CAIRE Group’s strategic global IP portfolio (including patents, trademarks and trade secrets).

• Manage outside counsels to properly draft and prosecute high quality patent applications, draft petitions, appeals, and/or other exceptional or non-routine papers as necessary to gain allowance/issuance.
• Evaluate patent and other IP positioning of third parties to provide risk assessment, freedom-to-operate analysis, product clearance, and mitigation strategies.
• Closely collaborate with key stakeholders to develop and align CAIRE Group’s patent portfolio with business goals.
• Work closely with engineering teams to identify and protect patentable technologies.
• Design, implement and conduct internal IP procedures including invention disclosure processes and patent committee meetings.
• Conduct infringement assessments.
• Evaluate and act on third-party patent matters, potential patent acquisitions, and licensing opportunities.
• Stay updated on relevant law, regulations and evolving developments in global IP law, providing legal advice to management and other attorneys and recommending policy and/or process changes as needed.
• Develop and participate in education and training, ensuring appropriate employees and management are knowledgeable of pertinent standards, policies and laws.
• Provide legal advice and guidance on a broad range of legal matters including contract review and negotiation, employment law compliance, privacy, trade law, etc.
• Support the creation, implementation and refinement of contract templates, forms, policies and procedures and prepare and deliver trainings to internal clients from time to time.
• Draft, review, and help negotiate a variety of contracts, including customer agreements, vendor contracts, distribution agreements, strategic partnership agreements, NDAs, etc.
• Collaborate with internal stakeholders to streamline contract management processes and maintain an organized contract repository.
• Collaborate with cross-functional teams to implement and maintain effective compliance programs.
• Participate in company-wide initiatives and other discrete projects as needed.
• Conduct internal investigations and manage legal disputes, working closely with external counsel when necessary.
• Keep up to date with legislative changes impacting the company’s business and industry.

Required Qualifications

Law degree from an accredited law school.

• Admitted to practice and in good standing before a state bar and the USPTO.
• Minimum 5 years’ experience in a law firm or in-house legal department as a practicing patent attorney; combination of law firm and in-house experience is a plus. EE, ME, Computer Science/Computer Engineering, or Physics technical backgrounds are preferred.
• Patent preparation, drafting and prosecution experience is required. Experience with or knowledge of patent practice in non-US jurisdictions is a plus.
• Experience in the rendering of patentability, non-infringement opinions, and general risk analysis is required.
• Excellent analytical ability and professional judgment.
• Excellent oral and written communication skills.
• Proven proactive and independent self-starter with the ability to manage, handle and prioritize multiple projects with a sense of urgency/energy and an emphasis on quality.
• Desirable Qualifications

Work experience in the medical device or pharmaceutical industries.