BASF is seeking an IP Counsel to work in Wyandotte, Michigan. The IP Counsel is responsible for:
• IP Estate Management including IP generation, defense, maintenance, and enforcement primarily in the US. Knowledge of the America Invents Act is needed. An understanding of foreign patent law and familiarity with European patent law in particular is also required. The ability to advise clients on patent coverage is critical.
• IP Transactions - including those relating to divestitures and acquisitions. Tasks include conducting public and confidential due diligence, undertaking IP analysis, negotiating IP matters, preparing and/or reviewing agreements, and participating in closings. The ability to perform well under tight time constraints, interact well with other BASF M&A team members especially commercial attorneys, and provide timely advice on any risks to the client is essential. Overseeing the integration of the acquired IP into BASF is also an important part of this position.
• IP Agreements including licensing of technology and patents (inbound and outbound licenses), joint development agreements, research and development agreements, and cooperation agreements. A familiarity with US antitrust law relative to licensing is needed. The ability to advise clients on licensing options, patent exhaustion, and IP valuation is critical.
• IP Litigation including trade secret and patent litigations. Conducting pre-filing analyses and advising the client on the cost benefit of a potential litigation is required. This position works with inhouse and outside litigation counsel to supports litigation activities.
• IP Counseling including Freedom to Operate opinions for new products and processes, invalidity opinions relating to third party patents, landscape and third party patent searching and analysis. The ability to advise clients on any risks and options is critical. Initiating oppositions or other patent invalidity challenges may be needed.
This position will be located at BASF Corporation’s Wyandotte, Michigan site (metropolitan Detroit area). Travel as needed to client locations in North America, client business meetings, and BASF’s parent in Ludwigshafen, Germany will be required. This position reports to Senior IP Counsel who reports to the General Counsel. The ability to do pro bono work through BASF’s relationship with the Pro Bono Partnership is available.
- BASF recognizes institutions of Higher Education which are accredited by the Council for Higher Education Accreditation or equivalent
• Bachelor’s degree in the chemical related arts such as chemistry, chemical engineering, materials, and materials engineering
• Graduate degree in the chemical related arts is preferred
• Registration to practice before the United States Patent and Trademark Office (USPTO) is required
• License in at least one state, preferably Michigan or New Jersey, and a member in good standing with any mandatory CLE completed is required
• Minimum 10 years of experience practicing before the USPTO
• Self-starter who is proactive and takes initiative
• Team player who can work well with other BASF patent attorneys, patent agents, support staff, and clients
• Excellent organizational skills
• Excellent communication skills including presentation skills and writing skills
• High-level problem-solving skills to review and evaluate legal and/or business problems, and recommend most favorable alternatives
• Familiarity with electronically filing documents with the USPTO is required
• Knowledge of the USPTO’s Public and Private PAIR systems for checking the status of filed patent applications is required
• The ability to use word processing to draft, revise, and finalize agreements with little to no administrative support is required
• The ability to work in a matrix organization and interact with IP counterparts located in Europe is necessary
To apply, visit this link: http://on.basf.com/1300361intelpropcounfadv.
Employer Type: Large Corporation
Job Location: Wyandotte, Michigan