Director and Sr. Counsel (Patents and IP Transactions)
Job Description
As a member of the Patent Development Team (within the Global Technology & Commercial Legal Services Team), this individual will serve as a client focused business partner to support IP transactions, develop WD’s portfolio of patents and trade secrets in alignment with business objectives, and provide solution oriented intellectual property advice and support to the client. This full-time position is based in WD’s office in Irvine, California (will also consider San Jose, California, and Rochester, Minnesota) and will report to the Director, Associate General Counsel, Patents.
ESSENTIAL DUTIES AND RESPONSIBILITIES:
• Review, draft and negotiate IP related agreements or other agreements with IP provisions, including technology and IP licenses, joint development agreements, supply chain related agreements, evaluation and partnership agreements.
• Support the IP and technology aspects of M&A; and joint venture transactions including due diligence and agreement drafting and review.
• Develop and manage parts of a global patent and trade secret portfolio to protect company technologies and processes, including managing outside counsel on patent drafting and prosecution per quality and budget objectives.
• Manage/conduct invention review, patentability searches and associated invention review board meetings and processes.
• Assess patent landscapes responsive to client needs and review competitive industry information to identify high valued patents in the company portfolio.
• Protectively engage with client organizations to understand the latest developments, competitive challenges and technical roadmaps. Harvest new inventions and align patent development and freedom to operate strategies with evolving business needs.
• Provide intellectual training to client organizations and advice in response to client requests.
• Partner with the Compliance function to ensure proper handling of company and third party confidential information, including reviewing technical publication materials for confidentiality screening.
• Assist the litigation team on matters related to patent litigation defense or enforcement; assist other teams within the Legal organization on matters involving patents or other IP issues.
Requirements
Function: Legal
Experience Level: Director