Job Description
We are seeking an experienced, sophisticated, and business-oriented Assistant General Counsel who thinks innovatively and acts proactively to provide legal support to our business in connection with all aspects of the company’s IP portfolio and global IP and brand protection strategy. The ideal candidate will have deep expertise in all aspects of IP law (including patent law) and a strong track record of protecting and enhancing brand value in a dynamic and fast-paced business environment. The selected candidate will interface with business partners throughout our organization to provide strategic and comprehensive legal counsel to mitigate the company’s global risk profile and help accomplish our business objectives.
Core Responsibilities:
- Pro-actively advocate for, and fiercely protect, all forms of the company’s intellectual property assets.
- Thoughtfully and thoroughly manage, and strategically grow, the company’s global IP portfolio, including patents, trademarks, copyrights, trade secrets and related assets.
- Oversee the company’s global portfolio of patents, trademarks, copyrights, trade secrets and related assets by developing and implementing comprehensive strategies for IP protection, enforcement and monetization, including without limitation by leading all IP prosecution efforts, conducting and counseling on clearance searches, investigating infringement matters, drafting cease and desist letters, and counseling on a wide range of issues related to the development, ownership, licensing, protection and use of intellectual property. Perform IP audits and ensure proper IP registration, renewals and filings across jurisdictions.
- Provide strategic legal advice to product, RD&E, engineering and executive teams to align IP strategy with company’s innovation and commercial goals, including with respect to product innovation initiatives, patentability issues, branding, product launches and competitive risks and opportunities.
- Lead all brand protection efforts, including monitoring unauthorized use of IP, anti-counterfeiting actions, and enforcement through takedowns, cease-and-desist letters, and litigation when necessary.
- Work with investigators, outside counsel, and relevant regulatory and enforcement bodies globally.
- Oversee and manage IP-related disputes, including patent enforcement and defense matters, related litigation and administrative proceedings, coordinating with external counsel, as needed.
- Review, draft and negotiate intellectual property related agreements.
- Conduct IP audits, due diligence reviews, and develop risk analysis in M&A transactions and assessments of third-party intellectual property rights.
- Assist with the review, preparation, and negotiation of a wide variety of commercial contracts, including vendor and service contracts, supplier and distribution agreements, customer agreements, NDAs, etc.
- Keep abreast of, and advise business partners in connection with, changing laws, regulations, and industry standards.
- Participate in the definition and development of corporate policies, procedures, and compliance programs.
- Other projects, as assigned.
Qualifications & Skills:
Knowledge, Skills & Abilities:
- Strong relationship builder throughout all levels of an organization and with external partners
- Open, authentic, determined, transparent, and acts with sound judgment, integrity, and candor.
- High degree of urgency, accountability, and motivation.
- Exceptional analytical and communication skills, both verbal and written; extraordinary attention to detail.
- Highly collaborative with a willingness to seek input from others at all levels of the organization.
- Expertise in thinking holistically concerning downstream consequences of recommendations in the course of the work stream and throughout the organization.
- Comfortable navigating ambiguity, a fast-paced environment and quickly changing priorities with good humor and a positive attitude.
- Skilled in effective management of outside counsel.
Education & Experience:
- Bachelor’s degree & JD degree from an accredited, top-tier law school; member of the state bar in one or more U.S. jurisdictions, including Florida (or eligible for admission as authorized in-house counsel in Florida).
- 10+ years of experience practicing law, preferably with a global law firm before moving to in-house counsel with positions of increasing responsibilities, with a focus on intellectual property (including patent matters) and brand protection.
- Retail/consumer product-focused industry experience required. Patent experience required.
- Expertise in global patent law, trademark law, anti-counterfeiting strategies, copyright, trade secret protection, and domain name enforcement.
- Experience in successfully managing related outside legal resources.
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