Experience
8 yrs required
Location
Westchester, IL, United States
Posted on
Sep 18, 2020
Profile
Senior IP Attorney
Responsibilities: Actively manage a global patent portfolio, including evaluating invention disclosures (including patentability assessments), drafting patent applications that meet U.S. and international patentability standards, prosecuting domestic patent applications before the USPTO, managing the filing and prosecution of international patent applications, and coordinating/managing reexaminations, IPRs, invalidation actions, appeals, and oppositions, including assessing and developing the associated strategies. Actively engage with the global business and innovation group to develop, implement and manage IP strategies for products in development, including freedom-to-operate assessments and patent and trademark filing strategies, as well as IP strategies associated with Ingredion’s existing portfolio of products. Align the global patent portfolio with key strategic business drivers and provide client counseling on IP matters, including when to patent, publish, or maintain as a trade secret. Help develop and implement IP best practices, policies, and procedures. Help develop and provide IP training seminars to raise IP awareness across the global organization, including through in person training, video- or web-enabled training or train the trainers approaches. Conduct IP due diligence of third-party IP assets, including communicating outcome of assessment to senior management, and drafting and negotiating the IP provisions of the associated in-licensing, purchase, or JV agreement. Draft and negotiate non-disclosure, material transfer, joint development, patent license, and other agreements. Actively manage and set IP matter budgets (including performance against such budget), lead cost reduction initiatives, and identify and select external legal counsel including negotiating legal fees and improving the overall efficiencies and cost management processes and procedures. Actively managing IP litigation, including driving the strategy, briefing senior level management on the status of the case and any issues requiring business in-put, establishing and managing the budget and associated external legal counsel budget.
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