Intellectual Property Attorney Sample Job Descriptions

Intellectual property attorneys work to protect the rights of both companies and individuals over their created material. This is an important role because they assist in protecting both products and inventions from being profited upon by other parties. Intellectual property can take the form of copyrights, patents, design rights, and trademarks. An effective intellectual property attorney is creative and capable of dealing with complex subject matter, so a broad base of technical knowledge in specialized topics is critical for career success. [Your Company Name] is hiring experienced intellectual property attorneys to take our business above and beyond. If you have experience in creating patents, licensing trademarks, and licensing agreements, an intellectual property attorney position at our company could be a good fit for you. 

Typical duties and responsibilities

• Draft and manage agreements involving IP, including license agreements, manufacturing agreements, and supply agreements
• Advise and counsel clients on matters related to intellectual property, including patents, trademarks, and copyrights
• Draft, file and prosecute patent applications on behalf of clients

Education and experience

This position requires a Juris Doctorate as well as a license to practice law in the state where the candidate will work. Employers recommend candidates take college courses in science, engineering, and technology-related subjects. Candidates also need a passing grade on the United States Patent and Trademark Office (USPTO) registration examination and admission to the Patent Bar.

Required skills and qualifications

• Written and verbal communication skills
• Knowledge of U.S. patent laws
• Research skills
• Analytical thinking
• Expertise in negotiation

Preferred qualifications

• Exceptionally analytical 
• Excellent communication skills
• J.D. and certifications on top of it
• Great interpersonal skills
• 3+ years working in a law firm

The Associate Intellectual Property Counsel is responsible for legal issues related to the ownership and exploitation of service marks or trademarks, patents, trade secrets, and copyrights. Position will be the day-to-day contact point on US IP matters.

Principal duties and responsibilities

• Advises the business on all aspects of IP such as brand and copyright clearance, brand protection and enforcement, IP aspects of new ventures, marketing campaigns and product launches
• Leads and/or assists on US portfolio management and registered IP prosecution for trademarks and patents
• Merger & Acquisition specialist IP support including working with external counsel on IP due diligence and managing post-acquisition IP integration
• Provides IP support for complex legal agreements
• Manages IP litigation
• Handles IP infringement issues, including online takedowns, drafting and sending or responding to cease-and-desist letters, and preparing settlement agreements
• Innovation capture and patent prosecution (with the assistance of external patent attorneys)
• Drafts (or supervises on) IP assignments and licenses
• Works with external IP advisers
• Supervises paralegals (and possibly junior lawyers in the future) on routine IP tasks such as brand monitoring and basic IP contracts
• Provides IP training to the business
• Prepares business-facing IP policies
• Provides input on IP strategy

Competencies

• Entertainment/gaming legal experience and/or regulated market experience is an advantage
• Solid foundation in all aspects of IP law
• Proactive self-starter who is comfortable working independently in a fast-paced environment while maintaining attention to detail
• Problem-solving attitude and strong organizational skills
• Ability to collaborate effectively and positively with others
• Excellent interpersonal and communication skills
• Commercial acumen, understanding commercial realities/priorities of the business and be able to give balanced advice on legal and commercial risk, adapting approach where necessary
• Manage ambiguity
• Results-driven, consistently achieving goals/meeting deadlines, and pursuing goals with a sense of urgency/energy and an emphasis on excellence
• Balance and prioritize multiple stakeholders
• Proactive in liaising with colleagues and to formulate plans or policies that may not already exist
• Self-confidence and ability to build a network within the legal team and across the business, understanding who to go to for advice and knowledge

Supervisory responsibility

• Supervisor of processes
• Paralegal

Work environment

This position operates in a professional office environment. This role routinely uses standard office equipment such as computers, phone, photocopier, filing cabinets and fax machines. The noise level is usually moderate.

Become a preferred partner through strong engagement with commercial and technical stakeholders of advancing businesses in chemistry – and chemical engineering-related markets, including glass and polymers.

• Strategically developing and managing company’s global patent portfolios, including actively shaping portfolios consistent with shifting business objectives considering third-party patent risks, competitive patent portfolios, and products/processes
• Actively managing preparation and prosecution of U.S. and foreign patent applications, working to help steer inventive activities and align patent assets with value creation
• Developing profitable IP and commercial positions for third-party collaborations, along with drafting and negotiating IP-related agreements
• Performing IP due diligence and drafting and negotiating IP-related terms for M&A transactions as part of the deal team
• Counseling businesses on trade secret strategy, protection, and enforcement
• Counseling businesses on risks, options, and recommendations concerning potential disputes and teaming with in-house litigation capability and outside counsel to deliver advantaged outcomes on technical IP litigation matters
• Providing technical IP training

Requirements

• Juris Doctor from an accredited law school
• State bar admission; registration to practice before the USPTO
• 5+ years of experience in patent law
• Bachelor’s degree in chemistry, chemical engineering, or materials science

What will put you ahead

• In-house IP experience
• International experience
• Trade secret experience, including protection and enforcement strategies
• Transactional and M&A experience
• IP litigation experience
• Trademark experience
• Familiarity with IP software systems (e.g., First to File, Innography, Memotech)

Our goal is for each employee, and their families, to live fulfilling and healthy lives. We provide essential resources and support to build and maintain physical, financial, and emotional strength – focusing on overall wellbeing so you can focus on what matters most. Our benefits plan includes – medical, dental, vision, flexible spending and health savings accounts, life insurance, ADD, disability, retirement, paid vacation/time off, educational assistance, and may also include infertility assistance, paid parental leave, and adoption assistance.

The successful candidate for this position will play an important role in maintaining and growing our trademark and patent portfolio and protecting our brand and brand relationships. We are looking for a candidate with a proactive and positive attitude, and the desire and ability to collaborate effectively with team members and external business partners in a positive and productive manner. A good fit for this position will also have keen attention to detail, be comfortable with and thrive in a fast-paced environment and possess the ability to be flexible and agile as we grow toward the future.

Duties

• Oversee and monitor the company’s trademark and patent portfolio, including being responsible for clearance reviews, application of registrations, and providing timely responses or taking actions necessary to maintain registration
• Provide advice and recommendations to managers and/or business executives regarding trademarks, patents, copyrights and branding, including clearance searches, strategy and maintenance of trademark and patent portfolio
• Review and negotiate agreements between the company and its clients, business partners, and/or service providers, including non-disclosure agreements, professional services agreements, licensing agreements, etc.
• Generate license agreements to both protect our company IP, and assist in obtaining a license to utilize IP owned by others, in connection with various business opportunities
• Support the Director of Legal Affairs with frequent interface and management of various international law firms as requested
• Assist with the training and management of team members as needed
• Participate in special projects and legal research as needed

Requirements

• Must have in-depth knowledge of and experience with trademarks, patents, and copyrights, including but not limited to:
• U.S. and foreign trademark and patent counseling, clearance, and prosecution experience, including review and analysis of clearance searches, and preparing substantive responses to PTO office actions
• Preparing and filing applications to register trademarks and patents with the USPTO, including international registration
• Monitoring our trademark and patent portfolios, both domestic and international, including responding to action items and prosecution
• Preparing and responding to cease and desist letters and handling other enforcement matters, including TTAB and PTAB proceedings (oppositions and cancellations) and matters related to the use of trademarks on social media platforms
• Experience and familiarity with copyright law
• Experience creating, reviewing and negotiating agreements with clients, business partners and/or service providers, with a preference for experience with IP licensing/merchandising agreements
• Experience or familiarity with creative review, advertising laws, publicity rights, and social media
• Excellent written, verbal and interpersonal communications skills
• The ability to multitask and handle a busy schedule

Required job qualifications

• Must have or be able to quickly acquire knowledge of company structure (mission, goals, and objectives), and policies and procedures
• Must have a Juris Doctor degree and be admitted to a State Bar in at least one U.S. State
• Must have 5 years of experience, either at a law firm or in-house, involving trademark, copyright, and patent law
• Must possess a valid driver’s license
• Have the ability to travel, both domestically and internationally if requested
• Must be authorized to work lawfully in the United States of America
• Will not require Falcon’s Treehouse, LLC to commence (“sponsor”) an immigration case in order to be employed (now or in the future)