Intellectual Property Counsel
Houston, Texas Area
Negotiate contracts, including patent and know-how licenses, joint development agreements, sponsored research agreements, non-disclosure or confidentiality agreements, M&A related tech transfer licenses and assignments for joint ventures, divestitures, and acquisitions, and the like.Conduct Freedom to Operate analysis and engage outside counsel for opinions as necessary, counsel AGC and vice presidents of business segments regarding strategic risk and exposure.Facilitate Patent Review Committees to cull portfolio for annuities and maintenance fees, saving roughly 40% in 2017, formulating patent portfolio strategies (including foreign and domestic filing strategies) and spend forecasting for internal clients based on filing decisions.Counsel business segments in risks and Freedom to Operate issues.Manage incoming and outbound patent infringement assertions, and reporting on legal exposure relating thereto, provide technical and legal support to outside litigation counsel on active litigation matters.Manage outside counsel for large global portfolio for half of the company's business segments, including invoice review for business segment, and negotiated lower rates as well as flat rates to reduce global spend.Manage trademark prosecution conducted by TM paralegal. Counsel marketing and internal business clients on results of trademark searches and prosecution matters.Manage incoming and outbound trademark infringement assertions, and reporting on legal exposure relating thereto.Domain Registration and SSL Certificate management- develop process for managing input from IT, marketing, and business stakeholders, and managing third party vendor registrar and certificate authority sponsor.Inter-company licenses and facilitating internal tax transfer pricing group activitiesFacilitate compliance projects, including internal investigations and securing compliance efforts engaging foreign associates around the world for IP preparation and prosecution.
