Intellectual Property Counsel

4 weeks ago

Florham Park, United States Tandym Group Full time

A recognized services company in New Jersey has a great Remote opportunity awaiting a new Intellectual Property Counsel. In this role, the Intellectual Property Counsel will have direct responsibility for providing IP legal support to the Agricultural Products business unit.

Responsibilities:

The Intellectual Property Counsel (Remote) will:

  • Collaborate with R&D and business unit clients to timely identify all agreements necessary to implement their respective objectives
  • Advise R&D and business unit clients on IP contract issues and interpretation
  • Review, negotiate, and draft a broad range of contracts such as:
    • Confidentiality agreements with universities, research organizations, commercial partners, and private sector institutions to implement long-term strategic and commercial objectives for the subject IP
    • Material transfer agreements covering early-stage, proprietary chemistry and/or biotechnology materials and/or products
    • Joint development agreements and other collaborative agreements
    • Service and consultant agreements
    • License agreements including complex, cross-border in and out license agreements, cross-license agreements, development license agreements, and license and supply agreements
    • Technology transfer agreements
  • Advise on patentability, validity, and FTO matters
  • Serve as IP advisor to the Agricultural Division's research and business colleagues
  • Minimal prosecution responses or direction to outside counsel
  • Perform other duties, as needed


Qualifications:

  • 10+ years of experience as an IP Attorney
  • Juris Doctorate and license to practice law in at least one US state
  • Admission to practice before the USPTO

Desired Skills:

  • Bachelor's and/or Master's degree in chemistry, biology or closely related discipline
  • PhD in chemistry, biology or closely-related discipline
  • In-house counsel experience
  • Experience with patent/license disputes and IP litigation
  • Experience with US patent invalidity and opposition proceedings
  • Experience in the fields of crop protection, digital agriculture, seed treatment and biological control, or plant biotechnology

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