Intellectual Property Counsel

Summary:

Serves as a key member of the IP legal team, supporting the businesses, research centers, manufacturing facilities and M&A clients, as well as supporting the Digital Solutions team. The role is a mixture of IP, contract and transactional work.  This position is in Houston, Texas and requires working at HQ offices at least 3 days/week.

Duties and Responsibilities:

• Provide legal counsel and guidance to the various client groups (including Digital Solutions group) on matters of intellectual property law.
• Develop and implement strategies to protect IP assets.
• Review, draft and negotiate IP related contracts, IP related service/subscription agreements and advise fellow counsel regarding IP provisions contained in their contracts. 
• Support intellectual property aspects of complex transactions, such as mergers, acquisitions and collaborations. 
• Advise assigned client groups as to when IP related litigation is appropriate (e.g., patent infringement) and lead litigation efforts, through external counsel.   
• Draft, negotiate and provide legal counsel and guidance on contract and other commercial matters, including for the IT and Digital Solutions group.
• Build and maintain strong partnerships with the businesses, research centers, manufacturing facilities, other company departments and company management. 
• Develop and provide training to company personnel on substantive IP topics (e.g., proper use of company marks).
• Manage outside counsel as necessary for various matters, including patent drafting, prosecution and enforcements, all in a budget-minded manner.
• Work collaboratively with clients throughout the organization, including other attorneys.

Experience:

• Juris Doctor degree and licensed, as a member in good standing, to practice law in Texas, or otherwise eligible to practice as an in-house corporate attorney.
• Licensed and in good standing at the USPTO
• Strong academic credentials from a top-rated accredited law school.
• Minimum of 8 years of experience, preferably with major law firm and in-house corporate experience.
• Experience in managing corporate intellectual property matters
• Experience with SaaS agreements preferred
• Strong writing and verbal skills.
• Strong business acumen with an ability to balance legal and business requirements.
• Up to 10% travel may be required.