Reference : 568091

Intellectual Property Counsel

  • Tax and Law
  • United States
    Malvern
  • Permanent / Regular (US)
  • Posting date : 05/10/2019

Position description

The Legal department of Saint Gobain North America (SGNA) is looking for an Intellectual Property Counsel to join their team. The IP Counsel will be responsible for general counseling on IP matters including patent prosecution enforcement and clearance, as well as trademark and trade secret matters, while building and maintaining the patent portfolio for SGNA. This individual will interact with a wide variety of people from R&D engineers to senior business managers.

JOB REQUIREMENTS

  • Provide day-to-day legal advice to R&D professionals and senior business managers in connection with intellectual property matters and disputes, focusing particularly on patents and trade secrets.
  • Direct outside counsel in connection with patent procurement both within the US and abroad, managing outside counsel spend and litigation management including evaluating, recommending, and structuring settlements and defense postures.
  • Review and advice on intellectual property-related agreements such as NDAs, licenses and joint development agreements.
  • Monitoring and communicating pertinent changes in the law.
  • Drafting and negotiating joint development, licensing and other types of intellectual property agreements.

REQUIRED QUALIFICATIONS

  • 5+ years of experience as a lawyer in the IP field is required.
  • J.D. required, along with a Bachelor’s degree and/or equivalent educational experience.
  • U.S. Patent and Trademark Office (USPTO) registration is required.
  • Knowledge of both legal and technical rules and principles and sound judgment in applying them to real world problems to provide business-minded advice.
  • Excellent interpersonal, communication, organizational, writing, problem-solving and analytical skills are expected.
  • Travel to business sites and customers is quite likely to be required – including international travel.

Who are we ?

Saint-Gobain, one of the world’s largest building materials companies and manufacturer of innovative material solutions, helps create great living spaces by combining comfort and sustainability. For more than three-and-a-half centuries, Saint-Gobain has been enhancing the wellbeing of people everywhere, whether it’s by addressing climate change, delivering true sustainable development, advancing the information revolution, participating in medical breakthroughs or playing a vital role in space exploration. Focusing on the intersection of people, innovation and purpose, Saint-Gobain helps to address the needs of today and the challenges of tomorrow – offering employees the opportunity to invent themselves and reshape the world.

Top employer 2019