Assistant General Counsel Intellectual Property

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Assistant General Counsel (Intellectual Property)

Duties: Work with other staff in the Office of Counsel and other business functions in the organization to provide legal advice on all aspects of intellectual property, including inventions, patents, copyrights, licensing, IP-related government contract issues, as well as other business issues associated with the organization’s operations. Provide legal advice and services to APL staff and management, on all IP issues including on matters related to patents, copyrights, trademark proprietary information/trade secrets. Advise and provide patent-related legal advice, services and solutions to APL’s staff, supervisors/managers, and senior management in order to protect APL technology, facilitate technology transfer and comply with sponsor requirements, regarding: invention evaluation; domestic and international patent application preparation and prosecution; patentability, validity and infringement assessments; and, manage outside counsel performing the same functions. Advise and provide intellectual property (IP) legal advice, services and solutions to APL’s staff, supervisors/ managers, and senior management in order to protect APL technology, facilitate technology transfer and comply with sponsor requirements, regarding: IP-related government and commercial contract issues, including identification and assertion of rights in data; the use, protection and marking of software, including open source software; copyrights; cloud computing; and, privacy issues. Advise and provide legal advice, services and solutions to APL’s staff, supervisors/managers, and senior management in order to protect APL technology, facilitate technology transfer and comply with sponsor requirements, relating to the transfer of APL technology, including drafting and negotiating licenses, options and other technology transfer agreements. Advise and provide legal advice, services and solutions to APL’s staff, supervisors/managers, and senior management in order to protect APL technology, facilitate technology transfer and comply with sponsor requirements, in reviewing, negotiating, drafting and executing nondisclosure agreements, and provide oversight and direction of the nondisclosure agreement administrative process. Prepare and deliver training to APL’s staff, supervisors/managers, and senior management to protect APL technology, facilitate technology transfer and comply with sponsor requirements; assist in the development, modification, implementation and/or administration of oversight of APL-wide IP-related policies, procedures and practices; provide legal advice and services regarding APL’s operations; research, analyze and interpret applicable federal, state and local laws and regulations; monitor changes in the law and industry “best practices,” balance risk with significant impact on APL, and recommend changes designed to improve processes and facilitate APL’s business and/or reduce exposure and liability; participate in local, state, regional, federal, and other national forums to maintain professional expertise and external contacts in serving as one of APL’s functional experts in patents and intellectual property.

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