Intellectual Property Associate Counsel- Temporary

CORE RESPONSIBILITIES AND TASKS:

• Effectively handles assigned legal activities for business units, functions, or legal practice areas.
• Provides expert advice and counsel on patents, trade secrets and related intellectual property issues to multiple research and development groups, and assistance with intellectual property issues in global markets and more particularly, in the APAC region.
• Supports projects and teams - Supports or leads projects and teams providing legal support and solutions to the company's business units or corporate departments.
• Mitigates risk - Identifies and analyzes existing and emerging legal risks. Develops and implements business-focused strategies to manage risks.
• Compliance - Assists the development and implementation of policies, procedures, and control mechanisms to promote compliance with applicable laws, rules, and regulations.
• Proactive guidance - Stays abreast of new regulations and emerging legal risks; provides proactive advice and counsel to business units and corporate functions that may be impacted.
• Manages outside counsel in an efficient and cost effective manner, as necessary.
• Provides patent investigation, freedom-to-practice, novelty assessment, application preparation and prosecution, in China and abroad (including EPO, US and the PCT).
• Negotiates, drafts, and manages of intellectual property agreements including non-disclosure and confidentiality agreements, joint development agreements, government-sponsored research and consulting agreements, technology licenses, distributorship agreements.
• Collaborates with scientists, engineers and researchers and technical directors regarding new products, product innovation and improvements, IP, and patent education.
• Assists with and reviews invention disclosures, research activities and new product innovation, including prior art searching.
• Evaluates of intellectual property and developing protection strategies, providing effective guidance with regard to IP risks and strategies.
• Provides IP due diligence for mergers and acquisitions.
• Provides patent, trademark and trade secret dispute and litigation support.
• Identifies trade secrets and secures them with documentation and protection.
• Conducts IP education/training and support for marketing, sales, general legal and technology personnel, and departments.

"Job duties include contact with other employees and access confidential and proprietary information and/or other items of value, and such access may be supervised or unsupervised. The Company therefore has determined that a review of criminal history is necessary to protect the business and its operations and reputation and is necessary to protect the safety of the Company's staff, employees, and business relationships."

POSITION REQUIREMENTS:

FORMAL EDUCATION:

Required:

• Undergraduate or Graduate Degree in Chemistry or Chemical Engineering
• Registered to practice before the Chinese Patent Office
• License to practice law required (applicable jurisdiction)

Preferred:

• Detailed knowledge of coatings chemistry and polymer chemistry
• Familiarity with U.S. Patent Law

KNOWLEDGE & EXPERIENCE:

Required:

• 3+ years of intellectual property law experience in a law firm or corporate legal department

Preferred:

• Fluent in English and Mandarin
• High level of proficiency with business software and databases
• Experience and knowledge of all aspects of intellectual property with specialization in patents and trade secrets and sub-specialization in trademarks
• Experience in negotiation and drafting of technology and product development agreements, preferably including experience with large commercial product manufacturers and consumer products
• Extensive experience in managing a high volume of intellectual property matters
• Extensive knowledge of related areas of IP law and business law fundamentals
• Proven ability to manage outside counsel on complex matters in a cost-effective manner
• Familiarity with patent research tools

TECHNICAL/SKILL REQUIREMENTS:

Required:

• PC skills; Microsoft Office applications (Word, Excel, PowerPoint); and other applications as required
• General working knowledge of legal software

TRAVEL REQUIREMENTS: (TIME SPENT AWAY FROM HOME OR OTHER TYPICAL OFFICE LOCATION)

• 5-10%