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Intellectual Property Attorney

3 months ago

Sugar Land, United States Schlumberger Full time
The IP Attorney serves as an integral member of a technology center, providing IP legal services and advice in support of technology development. The successful candidate will have strong experience in conducting freedom to operate analysis, drafting technology related agreements, patent drafting and prosecution, overall intellectual property protection, intellectual property enforcement analysis, and providing guidance to technical persons and business management regarding intellectual property. The right candidate will enjoy learning about developing technologies in a dynamic environment and will be able to perform independently. The right candidate will be a self-starter with a team attitude and be able to anticipate IP needs and partner with engineering to secure a competitive advantage and protect disruptive technologies. He/She reports to a Senior IP Counsel.

Roles and Responsibilities:
  • Provides an IP review of internally developed products and services and provides searches for and freedom to operate analysis of related competitor patents throughout all phases of the product lifecycle.
  • Drafts and negotiates development agreements, confidentiality agreements, collaboration agreements, and consulting agreements.
  • Responsible for managing an Intellectual Property docket of patents, copyrights, trademarks, and trade secrets.
  • Prepares and prosecutes patent applications for a global patent portfolio.
  • Partners with inventors to secure invention disclosures and works with engineering and business teams to facilitate decisions regarding IP protection options for each invention disclosure.
  • Conducts intellectual property training and advises management on IP legal issues and IP related Company policies.
  • Supports Senior IP counsels in enforcement matters involving the technology center.
  • Interacts and collaborates with IP professionals in other technology center locations.
  • Monitors and landscapes competitor IP activity in relevant technology areas.
  • Participates in the Legal Department training and development initiatives.

Qualifications and Experience:
  • Law degree (JD or equivalent) and member of good standing in a state Bar.
  • Registration to practice before the USPTO.
  • University technical degree required, preferably in electrical engineering, mechanical engineering, or chemistry.
  • Preference is for a candidate with a minimum of 4 years of IP legal experience after law school, working primarily with patent prosecution, patent law, and technology-related agreements.
  • Strong written, verbal, interpersonal, presentation, analytical, organizational, and negotiation skills, with the ability to meet deadlines as well as the ability to converse and advise effectively with all levels of company management.
  • Ability to work independently and manage multiple simultaneous projects effectively.
  • Candidates must be able to legally work and reside in the US without sponsorship.
  • Experience working for or representing a multinational company preferred.
  • Previous experience working with oil and gas technology preferred.
  • The position may involve limited domestic and international travel.