Collins McNicholas

Assistant Intellectual Property Counsel – EMEA required with 5 years plus experience in IP and technology law, including at least 3 years prior practice with an internationally recognized IP law firm

 Responsibilities:

  • Analysing and mitigating the risks of third party intellectual property (e.g., survey of competitor patents)
  • Analysing company’s IP in view of competitive products
  • Assisting in patent litigation and pre-litigation activities, including working with outside counsel to develop strategies to initiate, defend, resolve and prevent various forms of litigation
  • Supporting commercial and M&A transactions, including IP reviews of potential acquisition and IP portfolio integration
  • Identifying and evaluating patentable and strategic inventions (e.g., including prior art searching)
  • Proactively supporting the engineering and innovation strategy for the business unit
  • Coordinating IP-related communications, visibility and training for the business unit
  • Interfacing with senior management, production, marketing, legal and other professionals to support IP-related activities of the business unit
  • Managing prosecution decisions for a worldwide patent portfolio and coordinating with outside counsel (e.g., patent application drafting)
  • Assisting in a wide range of other intellectual property issues, including copyright, trademark, and trade secret matters

 Requirements:

  • Minimum of 5 years relevant experience in IP and technology law, including at least 3 years prior practice with an internationally recognized IP law firm
  • Strong technical background with an undergraduate degree in Engineering or Computer Science. Other scientific/technical backgrounds will be considered depending upon relevant experience. Experience with identification document, access control technology, and related products preferred
  • Law degree from a top rated law school (preferred) or equivalent experience and training
  • Admitted to practice law in at least one European jurisdiction and/or a state of the United States (preferred)
  • Registered to practice before the European Patent Office and/or the United States Patent and Trademark Office
  • Strong legal and business judgment
  • Strong organizational skills, maintaining attention to detail on multiple projects simultaneously and adjusting to changing priorities and deadlines
  • Proactively isolate and prioritize issues to focus on implementing both top-level, strategic solutions as well as the day-to-day initiatives
  • Quickly assimilate and understand complex situations and information, including highly technical information
  • Efficiently manage intellectual property portfolios and outside counsel globally;
  • Monitor legal budgets
  • Ability to speak, read, and write English fluently (mandatory) and French and/or German (preferred)
  • Travel availability up to 15%

For a confidential discussion and more information on the role, please contact Noeleen Stewart on 091706712 or email noeleen.stewart@collinsmcnicholas.ie.

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