NewMarket Services

Sr. IP Attorney

Location US-VA-Richmond
Category
Legal

Overview

IP Counsel position will serve the Industrial Strategic Business Unit (SBU and be responsible for all IP functions, including, e.g., freedom-to-practice opinions, invention harvesting, managing patent portfolio and providing transactional legal support (NDA, JDA, etc.) for the Industrial SBU.

Responsibilities

  • Strategically develop our worldwide patent portfolio, including directing and managing domestic and foreign outside counsel to prepare and prosecute patent applications
  • Manage invention disclosures, including collecting and screening disclosures, conducting inventor interviews, presenting disclosures at patent committee
  • Conduct in-depth analyses of competitor products and IP portfolio
  • Interact with and provide legal and strategic guidance to senior management, chemists, formulators and other functional organizational leadership
  • Collaborate with commercial legal counsel, including preparing and reviewing research and development agreements, confidentiality agreements, license agreements, and consulting agreements and counseling the business regarding IP transactional matters
  • Conduct employee training sessions on the protection of innovations through the patent process, best practices for maintaining confidential business information, contractor and vendor matters, and the overall development of intellectual property assets
  • Occasional domestic or foreign travel

Qualifications

EDUCATION & EXPERIENCE MINIMUMS:           

  • Juris Doctor from accredited law school and admitted to a US state bar in good standing
  • USPTO registration in good standing
  • BS in chemistry
  • Minimum of 3 years as a patent attorney, counseling clients on intellectual property issues. The successful candidate must have experience prosecuting chemical patent applications.

EDUCATION & EXPERIENCE PREFERRED:

  • The preferred candidate will have an M.S. or Ph.D. in chemistry, but these degrees are not necessary, particularly if the candidate had an excellent undergraduate academic performance.
  • Experience searching and performing freedom-to-operate clearances.
  • Working knowledge of patent laws in major jurisdictions outside of the U.S.
  • Experience drafting and prosecuting polymer, small-molecule and chemical formulation patent applications and managing a world-wide chemical portfolio

             SKILLS/ABILITIES:

  • Experience with one or more patent search tools, e.g., STN, Patsnap, TotalPatent, etc.
  • Proficiency with ChemDraw software

An Equal Employment Opportunity/Affirmative Action Employer.  All qualified applicants will receive consideration for employment without regard to the individual’s race, color, sex, sexual orientation, gender identity, national origin, religion, age, disability, genetic information, status as a military veteran or any other characteristic protected by applicable law.

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