The Assistant General Counsel - Intellectual Property attorney provides legal guidance and support across all Company matters relating to all areas of intellectual property. This role ensures the organization complies with all confidentiality and intellectual property laws, government regulations, and internal policies, while serving as a trusted advisor to R&D and BU leadership and Company business partners. The position also represents the Company in USPTO matters. This position reports to the Deputy General Counsel – Litigation and Intellectual Property.
Counsel multiple business groups on all intellectual property and trade secret issues. Provide guidance on wide variety of both federal and state laws. Draft and prosecute patent applications. Prepare freedom to operate opinions and other IP related legal documents. Draft and negotiate CDAs, IP-related agreements, and intellectual property provisions of commercial agreements. Advise clients on legal implications of proposed actions or agreements, on available alternatives, risk mitigation strategy, assertion of IP rights and pre-litigation counseling. Provide training to the businesses and R&D clients on IP related matters. Advise on compliance with various Company policies. Assist with M&A and other special projects. Travel up to 15%
Essential Duties & Responsibilities:
Intellectual Property Legal Support (85%)
- Function as a key member of the in-house intellectual property attorney team and the overall Arkema law department.
- The position functions at the interface of, and integrates, law, technology and business; it provides strategic and legal support to research management and business management. The position can substantially impact the valuation of research and commercial development projects that are contingent on patentability, license values and freedom to operate.
- Support and provide legal guidance to multiple business units within Arkema and its subsidiaries.
- Fast-paced environment, requiring wide range of capabilities, and flexibility.
- Provide legal advice on all intellectual property needs, including: drafting and prosecuting patent applications in multiple technology areas; providing advice to management concerning the development, acquisition, utilization and enforcement of global patent and trademark portfolios; protecting new products and processes; evaluating new products and processes for potential infringement of patents; and ensuring the accurate and timely administration of the global patent and trademark portfolios.
- Provide advice on laws at both the federal and state level.
- Work collaboratively with the global intellectual property team, and independently with business group clients with limited supervision, as primary intellectual property legal advisor to the businesses.
- Draft and negotiate substantially all agreements relating to patents, trademarks, trade secrets, confidentiality/non-disclosure, including, for example:
- joint development of technology and other collaborative programs;
- intellectual property provisions of commercial agreements in support of the law department’s commercial attorneys;
- Non-disclosure agreements with customers and vendors; and
- University and government collaborations.
- Negotiate intellectual property legal matters on behalf of the company, including with customers, suppliers, third party vendors, and government officials.
- Provide intellectual property-related legal guidance, including for patent infringement and trade secrets issues, to E-Suite, BU leaders, R&D, business personnel and staff groups.
Other Miscellaneous Duties (15%)
- Provide legal advice and assistance on acquisitions, divestitures, joint ventures, financings, restructurings, and other special projects, etc. as needed.
- Provide training to the E-Suite, BU leaders, R&D, business personnel and staff groups on IP related matters.
Years of Experience:
- Minimum 10+ years intellectual property and patent experience, preferably working with and/or for large chemical companies or in the manufacturing industry.
- Primary practice areas: intellectual property, patent, and trade secrets; experience in patent assertion and IP litigation a plus.
- Both in-house and law firm experience preferred.
Education:
- PhD in Chemistry related field (e.g., Chemistry, Polymer Chemistry or Material Science) required
- Juris Doctorate (JD) from an accredited law school required
Certifications/Trainings:
- Admitted to the Bar of a US State or Commonwealth, preferably PA
- Must be registered to practice before the U.S. Patent & Trademark Office
Competencies -Knowledge Skills & Abilities:
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Expert knowledge of federal, state and local IP and confidentiality laws and regulations
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Excellent judgment, communication (verbal and written), and problem-solving skills.
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Ability to manage sensitive matters with discretion and professionalism.
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Sound judgment and risk assessment
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Relationship-building and collaboration
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High integrity and confidentiality
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Must enjoy fast-paced environment, be able to work independently, and balance numerous projects and technology areas.
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Excellent interpersonal skills dealing with all levels of employees including CEO, CFO, General Counsel, Global Head of IP, VP of R&D, other senior management, support staff, as well as the entire global IP team across regions.
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Ability to achieve results within a highly matrixed environment.
HES Requirement:
- Supports the site HES policy and complies with all regulatory and internal requirements
- Participates in HES activities provided by site management and Arkema Inc.
- Supports and promotes the reporting of all health, safety, environmental, near-miss, accident or injury incidents
Physical Demands/Working Conditions:
- Hybrid position (present at Arkema’s Radnor site at least 3 days/week)
- May occasionally require working additional hours outside of normal workday/workweek to meet certain deadlines throughout the year.