Avery Dennison 
is seeking an IP Counsel to work in The Materials Group, its largest global division. This intellectual property counsel will focus on both U.S. and international intellectual property services, including IP prosecution (patent applications and office actions), transactions involving IP (licensing and development), patent opinions, right to markets, patent landscapes, trade secret protection, trademarks, and copyrights. This attorney will also be expected to work closely with the Materials Group’s global research and innovation functions assisting with efforts in the US, Europe, China, and India. This position reports to the Materials Group Senior Intellectual Property Counsel and is based in the Regional Law Department in Mentor, Ohio. A background in chemistry or a related field is strongly preferred. Demonstrated skills in practical day-to-day client support and counseling is a must.
Responsibilities:
• Provide a full spectrum of intellectual property legal services including client counseling, IP transactions including technology development and licensing contracts, patent protection, surveillance, enforcement, licensing, and litigation.
• Conduct patent novelty, validity and right to market studies and patent and information searches using internal and external resources and vendors, analyzing and summarizing search results.
• Draft and file patent applications and liaison with inventors for the information needed to prepare and file patent applications; conduct such drafting and liaison activities.
• Draft and file foreign and PCT patent applications and liaison with inventors and foreign counsel for the information needed to prepare and file patent applications; handle such filing and liaison activities.
• Attend to ongoing patent prosecution, including preparing responses to Office Actions received from patent offices, foreign and domestic.
• Transaction services include IP agreements such as license agreements, secrecy agreements, joint development agreements, and consulting agreements, as well as intellectual property advice in regard to M&A negotiations and other transactions.
Requirements:
• Must possess a technical degree, preferably in Chemistry or Chemical Engineering or a related field.
• Must possess a law degree (with excellent academic credentials), be registered with the USPTO, and be a member of the Bar in good standing. Willing to consider outstanding candidates admitted to the Bar in any state.
• 3-7 years of patent legal experience in a diverse intellectual property practice (law firm or in-house), including patent drafting and prosecution, non-infringement opinions, and freedom to operate opinions.
• Familiarity with films and adhesives, or products that are based on related chemistries is a plus.
• Experience with other intellectual property (IP) such as trademark and copyright is useful.
• Must have strong communication and interpersonal skills.
• A working knowledge of PCT and European patent practice is desirable.
• Experience drafting patents (patent prosecution).
• Transactional experience (licensing, JDA, partnering agreements, negotiation experience with universities) is a plus.
• Litigation experience is a plus.
• Approximately 25% travel should be expected.
Contact:
Apply by visiting this link: https://www.averydennison.apply2jobs.com/index.cfm?fuseaction=mExternal.showJob&RID=8190&sid=63.
Additional Info:
Employer Type: Large Corporation
Job Location: Mentor, Ohio