Intellectual Property Division Counsel
Location: Bloomington, Minnesota
Description: Seagate is at the momment seeking for Intellectual Property Division Counsel right now, this career will be settled in Minnesota. For complete informations about this career opportunity please read the description below. Job Description:
We are looking for a dynamic Legal Patent professional to join our Legal team in driving and supporting Seagate's efforts to maintain its IP leadership. Located in Bloomington, Minnesota, the Division Counsel reports directly to the Executive Director of Intellectual Property (Chief Patent Counsel), who is located in our Corporate Headquarters in Cupertino, California.
The Division Counsel is the division spearhead for Seagate's intellectual property strategy and management. This person champions the Company�s IP mission and strategy, implementing best practices to develop, supervise, and maintain Seagate�s intellectual property portfolio, including patent applications, trade secrets, copyrights, licensing and research agreements, publications, and intellectual property aspects of contracts and agreements, and extensive client counseling regarding such matters in a fast-paced and high volume environment, keeping executive management informed as to the status of pending IP matters, such as disputes, licensing negotiations, potential business and legal exposure, and IP litigation.
Typical duties include invention disclosure review, management of technical invention review boards (TIRBs), review and oversight of application drafts and filings, review, development, and implementation of IP strategy for discrete technology areas, performing IP analysis of both internal patents and applications as well as competitor/industry patents and third party/outside counsel advice and opinions, and drafting, negotiating, and reviewing IP agreements, as well as providing input on IP aspects of non-IP agreements. The position also involves a high degree of interaction with upper levels of management and engineering functions, is responsible for providing ancillary legal advice as appropriate, and otherwise represents the company in matters relating to intellectual property law. The position is also responsible for the management of the division IP budget, as well as management and evaluation of support staff.
Strategy and Vision:
Responsibility for strategy, planning, development, enforcement, protection and ongoing management of critical segments of Seagate's expanding intellectual property portfolio, with a clear focus on patents and trade secrets, as well as support for trademarks and copyrights, to ensure that the intellectual property portfolio efficiently and effectively supports the company's long-term strategy. Collaborate with executive management on company IP strategy.
Protection:
Provide patent and trademark strategy protection services, including interaction with R&D to identify technical areas needing protection; collaborating with and providing guidance to technical invention review boards (TIRBs); overseeing referral of inventions to counsel for preparation and filing of patent applications; implementing the use of agreements to strategically protect and manage Seagate IP, as well as monitoring and addressing infringement of Seagate IP worldwide.
Knowledge of Competitive Landscape:
Evaluate third party IP and provide company strategy recommendations; counsel on related legal and business options; and manage patent surveillance services, including working with business units to monitor IP landscape competitors and identify licensing opportunities.
Pre-Litigation Management:
Support the intellectual property conflict practice, including the delivery of services to investigate, analyze, and resolve conflict matters, all in close cooperation with the Litigation Department.
Manage together with the Litigation Department:
(i) the defense of infringement actions against Seagate, and create and run programs to ensure enforcement of Seagate's intellectual property rights; and (ii) litigation in which Seagate's intellectual property rights are challenged.
M&A and acquisition of IP Portfolios:
Interface with Seagate executives and members of Seagate's Corporate Business Development Department regarding transactions, initiatives and issues involving intellectual property including analysis and due diligence of intellectual property issues associated with Seagate's merger and acquisition activities or acquisitions of intellectual property portfolios.
General Counseling:
Provide IP counseling to Seagate�s management regarding effective use of IP, and methods to avoid or reduce adverse impacts of IP rights of others. Provide advice on company issues regarding IP, including business deals, joint development programs, company inventor programs, IP policies, and IP employment issues (including consulting and indemnification issues).
General Compliance:
Analyze changes in laws related to IP in the U.S. and internationally. Assist the development of Seagate guidelines and policies to comply with these laws and assess laws and recommend proposals.
Manage Outside Counsel:
Manage outside counsel, control quality of the service, and oversee efficient use of the budget allocated to outside counsel fees. Fixed fee arrangements have been negotiated with all U.S. firms doing patent work for Seagate thereby driving down costs and overhead significantly.
Education/Training:
Manage and assist education, information, training, and compliance programs regarding IP matters on an ongoing basis for a broad range of company personnel including Seagate's engineers, utilizing both online and live educational courses for protection of IP rights and confidential information.
Budget:
Responsible for the local IP budget, strategic planning, and employee evaluation.
Specific Duties:
- Counsel division managers and corporate officers regarding various intellectual property matters while managing the intellectual property portfolio for the following Seagate operations located in Minnesota and abroad:
- Recording Heads Operations
- Wafer and Head Manufacturing
- Evaluate potential IP in-licensing opportunities and provide recommendation.
- Evaluate potential IP threats and recommend appropriate course of action.
- Conduct pre-litigation evaluation of patent portfolio for possible enforcement actions, as well as defensive analysis and recommendation. Provide ongoing support of litigation as necessary, including identification of key technical personnel, overseeing division-based document collections, etc.
- Draft and negotiate IP-related joint development, licensing, non-disclosure, and know-how agreements.
- Collaborate with and advise corporate contracts and litigation groups, as necessary, in intellectual property-based transactions, examples of which include:
- Independent contractor agreements
- Supply agreements
- Marketing agreements
- Prepare and conduct IP related training pertaining to strategy and basic IP concepts.
- Manage invention generation, review, and prosecution via:
- Focused invention sessions
- Brainstorms
- Strategic IP harvests
- Internal client technical invention review boards
- Manage outside counsel (U.S. and international) with respect to patent related matters, including budget management and enforcement of billing policies.
- Conduct intake and exit interview for sensitive new hire or exiting employees as requested by site human resources.
- Some domestic and foreign travel as necessary.
Requirements:
- At least 8-10 years of legal experience with a strong preference for corporate law department experience, and with direct handling of client matters.
- This individual must be legally knowledgeable, productive, be able to manage multiple projects and priorities with minimal oversight, be self-motivated, and interact well with both management and engineering.
- 4-year college degree in material science, electrical engineering, chemistry, or physics is desired; J.D. or equivalent from an accredited law school.
- Licensed to practice law in at least one state, preferably Minnesota.
- Must be admitted to practice before the U.S. Patent and Trademark Office.
- Knowledge of semiconductor or thin film fabrication or physics is helpful.
- Experience in managing direct attorney and paralegal staff is preferred.
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If you were eligible to this career, please email us your resume, with salary requirements and a resume to Seagate.
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This career starts available on: Wed, 22 Aug 2012 01:05:53 GMT
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