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Senior Patent Counsel

Company: Enthone-OMI Corp.
Location: West Haven
Posted on: June 12, 2021

Job Description:

SUMMARY

Element Solutions, Inc (ESI) has an immediate opening in Connecticut for an experienced patent counsel to support patent prosecution and Intellectual Property (IP) portfolio development in various chemical technologies. ESI is a global producer of a broad range of specialty chemicals and a provider of expert technical services. ESI has over 4,000 people in operating facilities across more than 50 countries. ESI sells into numerous industries including electronics, semiconductors, computing, telecommunications, automotive, metal and plastic plating, anti-corrosion coatings, and waste water treatment. As a member of ESI's IP team, the person in this position will collaborate closely with R&D and Product Development organizations. The focus will be on patent work and IP portfolio development, with additional opportunities in other IP-related work.

This role reports directly to the General Counsel and joins an experienced inhouse legal team. The successful candidate must be able to work independently in multiple self-managed projects. A person well-suited for this position will bring excellence in IP legal skills, the ability to build a working understanding of diverse chemical technologies, a service mindset, project management skills, flexibility, energy, and judgment.

ESSENTIAL DUTIES AND RESPONSIBILITIES:

  • Maintain strong interactions with R&D and innovation teams to identify and obtain patent rights and develop meaningful worldwide IP portfolios in existing and new technologies
  • Provide strategic guidance in patent filing decisions, prosecution, renewals, offensive and defensive opposition actions, and trade secrets
  • Partner with technical and business leaders to hone current IP positions and to pursue IP rights and strategies to support key business goals; generate competitive assessments and analyze technology landscapes for value-add opportunities
  • Harvest inventions and manage the invention disclosure process; as time allows draft initial patent applications and claim sets; manage outside counsel in patent application preparation and responses to office actions and opposition proceedings; conduct patent mapping and renewal audits
  • Conduct initial patent clearance and opinion work (validity, patentability, freedom-to-operate, design-around, technology landscape, state-of-the-art); manage outside resources for in-depth analyses
  • Pragmatically assess, advise, and work to mitigate risks; provide legal guidance on design-arounds; monitor competitor positions and technology directions
  • Draft, review, and assist in negotiating a broad range of intellectual property agreements such as confidentiality, research, data sharing, technology development, IP asset purchase, collaboration, licenses, joint development, and IP-related clauses in other commercial agreements

EDUCATION and EXPERIENCE:

  • BS degree in chemistry or chemical engineering from an accredited school
  • JD degree from an accredited law school
  • Admission to a US state Bar
  • Registered to practice before the U.S. Patent and Trademark Office
  • Minimum of 5 years' experience in a law firm as a patent attorney performing search/opinions, patent preparation and prosecution, and drafting IP related agreements

ABILITIES:

  • Strong patent and technology search skills
  • Excellent skills in analyzing patent claims, prior art, technical design-arounds
  • Team-oriented attitude; strong written and oral communication skills
  • Ability to work independently and proactively with minimal direction, and to prioritize to meet deadlines
  • Ability to facilitate and accept organizational changes and growth

ADDITIONAL VALUED EXPERIENCES AND SKILLS (not required):

  • Prior chemistry technical work experience
  • Experience as corporate patent counsel
  • Experience managing and protecting trade secrets

U.S. Employment: If you have any difficulty using our on-line system, you may use the alternative method described below to contact someone about your interest in employment at Element Solutions Inc. Please reference this statement and job reference you are applying for when contacting us. Tel: 203-575-5848

Element Solutions Inc is an E-Verify Company and provides reasonable accommodation for qualified individuals with disabilities and disabled veterans in job applicant procedures. "Equal Opportunity Employer: Minority/Female/Veteran/Disabled/Gender Identity/Sexual Orientation"

#LI-MR1

Keywords: Enthone-OMI Corp., West Haven , Senior Patent Counsel, Other , West Haven, Connecticut

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