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Intellectual Property/Counsel/In House/Waukegan, Illinois

Company Name:
BITSOFT INTERNATIONAL, INC.
Senior Counsel, Intellectual Property
The candidate will provide legal advice, counsel and services in the areas of intellectual property (patent, trademark, and copyright) law. Will advise clients on business and Intellectual Property risks and recommends course of action. Develop and conduct advanced training. Lead and facilitate various constituents who are stakeholders in a matter. Take responsibility for the outcome of a portion of a project. Prepare, file and prosecute advanced patent applications. Work to understand complex functional situations by paying attention to the details of the tasks at hand and by breaking them down into smaller pieces. Collaborate with others and build strategic alliances globally. Negotiate to build broad-based support and/or persuades others in order to ensures that customers have a positive experience. Commit to meet or exceed customer expectations. Develop and maintain technical knowledge in specialized area(s), remaining up-to-date on current trends and best practices. Identify opportunities to improve efficiency while providing flawless transactions, services and products. Manage monetary assets and other resources to optimize cost effectiveness. Be a member of the in-house legal/intellectual property team responsible for supporting the company's business units in intellectual property matters, with a primary focus on patent strategy development, patent portfolio management and patent prosecution/procurement. Lead the company's newly-formed patent procurement team, assuming first-chair responsibility for managing the company's overall patent portfolio (500 patents/applications, worldwide). Oversee the administration of the entire back-office operations in regard to harvesting/documenting inventions, preparing/filing/prosecuting new patent applications and maintaining granted patents. Establish workflows to facilitate visibility of, and involvement in, the company's patent portfolio by the company's business units. Establish and oversee the operation of one or more patent review committees involving key R&D, marketing and business management participants. Integrate new patent assets in response to company acquisitions. Oversee the day-to-day operations of the patent procurement team and assume responsibility for the integrity of the in-house patent docketing system, as well as for the accuracy/completeness of the hardcopy patent files maintained in the department. Guide the company's business units in defining/executing practical patent strategies aimed at supporting long-term business objectives. Work with R&D, marketing and product development teams (both in the US and abroad) to identify potentially patentable products/services, taking a creative, yet practical, perspective for maximizing patent protection therefor. Stay closely aligned with key product/portfolio development initiatives to ensure that appropriate protective strategies are developed/executed. Work with suppliers on allocating patent rights for company-derived improvements. Draft and prosecute US/PCT patent applications with efficiency and accuracy, seeking the broadest possible protection for the company while operating within a specified budget. Establish sufficient procedures to maintain the company's correspondence address, private PAIR document exchange, USPTO deposit account, etc. Review communications from foreign patent offices/counsel and provide detailed instructions to foreign counsel accordingly. Conduct patent searching, as needed, to support all prosecution activities. Involve R&D, marketing and business leaders at all keys stages of prosecution to ensure that all actions taken are consistent with the company's business strategies and objectives. Actively participate in the IP team's current legal services in-sourcing initiative. Assist in defining/executing IP team policies, procedures and best-practices necessary to transition first-chair responsibility of the company's patent portfolio away from outside counsel within a specified time frame. Assist in the set-up of any systems necessary to facilitate in-house management of the company's entire patent portfolio. Assist the IP team in defining/executing operational excellence initiatives, with a special focus on the efficient day-to-day operations of the patent procurement team. Actively contribute toward the IP team's goals of reducing total outside expenses while increasing the efficiency and practicality of the team's interactions with the business units. Maintain a visible presence within the business units and provide periodic intellectual property training sessions. Maintain current understanding of US law and USPTO regulations in regard to intellectual property issues affecting the company's patent portfolio. Will have responsibility for supervising the day-to-day activities of one registered patent agent and one patent paralegal (both direct reports to this position). May also have responsibility for supervising certain activities of law clerks or legal assistants, as well as for tasks assigned to outside counsel and foreign counsel, patent searchers, draftsmen, etc.

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