Job Description
Provides overall direction and management for intellectual property strategies in Research and Development and Integrated Operations, including technology licensing, research collaborations and mergers & acquisitions in collaboration with other Intellectual Property, Litigation, Licensing, and Commercial counsel, both internal and external. Collaborates with Intellectual Property and Commercial attorneys on Litigation and Licensing. Minimizes adverse intellectual property litigation outcomes. Utilizes creative approaches to intellectual property strategies including intellectual property litigation. Manages and controls outside counsel costs.
Partners with business and research to integrate patent strategies; helps identify patents that the company can or should seek based on business, research and intellectual property strategies.
Aids technical and legal teams in developing intellectual property strategies for new products and technologies and patent opportunities.
Assists in negotiating and drafting agreements relating to licensing of products and technology.
Advises on potential opportunities to enforce intellectual property rights.
Conducts intellectual property-related due diligence and risk assessment in connection with new products or technologies, acquisitions and other corporate transactions, assists in developing and nurturing the organizational partnership between legal and business units, including innovation promotion and training programs.
Works alongside in-house intellectual property team, business lawyers and outside intellectual property counsel as needed and provides general strategic intellectual property advice to the supported organizations, and assists in formulating an optimal intellectual property strategy in the context of the supported organizations’ overall strategy, threats and opportunities faced today and in the future.
Reviews and evaluates industry technical and marketing activities and provides strategic advice to research and business teams based on findings; and, as permitted by law, analyzes technology and intellectual property positions of others in relevant technology areas and evaluates and manages patent challenges by opposition, reexamination, inter partes review, revocation, or similar contested patent office proceedings.
Duties/Responsibilities
Position duties fall into three major categories: (1) intellectual property strategy development and implementation; (2) drafting and negotiating intellectual property licenses and supporting related business transactions; and (3) intellectual property counseling which may include patent drafting and prosecution. Experience in these areas is a plus.
1. INTELLECTUAL PROPERTY STRATEGY DEVELOPMENT AND IMPLEMENTATION
As a member of key business, research and legal teams, develops, communicates and implements Pioneer’s intellectual property strategies for certain significant products and technologies. Works with Pioneer senior business and research management on intellectual property strategies, product pipeline planning to meet Pioneer business and research goals. Keeps current on new and emerging intellectual property laws and policy developments impacting agriculture and agricultural biotechnology and crop breeding and research, and provides support and gains alignment on intellectual property policies and issues to advance the business goals.
2. DRAFTING AND NEGOTIATION INTELLECTUAL PROPERTY LICENSES AND SUPPORTING RELATED BUSINESS TRANSACTIONS
As a member of key business and research teams, develops negotiating strategies for technology licenses, research collaborations or other intellectual property transactions and supports negotiations and drafting of these transactions.
3. INTELLECTUAL PROPERTY COUNSELING
Partners with research and business teams to develop, maintain, and implement intellectual property strategies. Provides legal advice for licensing intellectual property, freedom to operate, and analysis of industry Intellectual Property assets. Assists in forming strategic alliances that enhance Pioneer’s intellectual property portfolio. Works closely with internal R&D and Business Development clients to offer advice and counsel regarding a variety of intellectual property issues, including the creation and protection of intellectual property arising from the company’s in-house research efforts and/or acquisitions and licensing activities.
Interviews inventors to proactively identify patentable intellectual property.
Proactively works with business and marketing personnel to identify important current or future technologies and strategic applications.
Directs invention disclosure review process and disclosure review meetings to ensure that the best inventions are identified and patented.
Prepares and prosecutes patent applications and provides advice and guidance to patent agents in supported areas and critically reviews materials prepared by outside counsel to assure that it meets Pioneer’s standards of quality, timeliness and cost.
Participates as a member of a cross-functional team to provide support and establish “best practices” in intellectual property strategy, patent application drafting and prosecution, licensing, and other intellectual property matters.
Helps identify patents the company can or should seek based on business and intellectual property strategies.
Job Qualifications
Education and Experience
Doctorate of Jurisprudence required. Degree in mechanical engineering preferred. License to practice law and registration to practice before the U.S. Patent and Trademark Office required. 5-10 years diverse experience in the field of intellectual property law, including experience in patent prosecution, patent opinions, agreements, due diligence in transactions having an intellectual property focus, and experience negotiating and drafting technology licensing agreements is a plus. Experience with intellectual property matters relating to agricultural processes and systems is a plus. Familiarity with diverse technologies relating to the agricultural industry preferred.
Competencies
High degree of professional and personal integrity. Demonstrated ability to manage and work successfully with senior managers in a fast paced environment. Able to work within a team to drive action by quickly and confidently analyzing business factors and legal landscape. Excellent organizational, analytical and communication skills, both written and oral. Assertive, but not adversarial; able to build trust and credibility. Strong business acumen. Team-oriented, collaborative, adaptable and resourceful. Strong strategic perspective, creative problem solver. Able to see big picture, but also highly organized and efficient and able to manage detail. Capability to lead a team and work in a matrix setting. Demonstrated knowledge of mechanical engineering and experience in agricultural technology preferred.