IP Attorney – Large Corporation – Bloomington, Minn.

Seagate Seagateis searching for an Intellectual Property Attorney for one of our facilities, preferably to be located in the following locations: Bloomington or Shakopee MN, Fremont, CA, or Longmont, CO.  This role will report to our IP Associate General Counsel.

The Seagate Technology Intellectual Property Team handles all patent, trademark, domain name, trade secret and copyright matters, including IP strategy, client counseling and training, prosecution and enforcement. The team also supports IP litigation. The team includes IP professionals and staff located in six offices worldwide, and interacts with outside entities, outside counsel, and clients across the organization to capture, protect and use intellectual property in support of Seagate’s business strategies. The Intellectual Property Team is part of the Seagate Technology Legal Department.

Specific duties of the position may include:

  • Client counseling on intellectual property matters including integrating intellectual property considerations into business plans, enterprise intellectual property risk management and mitigation strategies, and strategies for enhancing the scope and strength of our intellectual property portfolio;
  • Technical responsibility areas may specifically include magnetic recording media, digital communications, and areas related to signal processing; and generally data storage;
  • Transaction support including technology licensing agreements, acquisitions, divestitures and strategic alliances;
  • Patent, trademark, copyright, domain name, and trade secret surveillance and enforcement, and leveraging combined intellectual property assets into comprehensive positions for protecting and advancing associated business initiatives;
  • Supervising outside counsel in preparation and prosecution of patent and trademark applications both domestically and internationally;
  • In cooperation with the Seagate litigation team, advising clients on potential and pending litigation;
  • Conducting white space, freedom to operate and similar analyses to inform business plans/products;
  • Evaluating potential IP licensing opportunities and provide recommendation;
  • Drafting and negotiating IP-related joint development, licensing, non-disclosure, and know-how agreements;
  • Collaborating with and advising corporate contracts and litigation group, as necessary, in intellectual property based transactions, examples of which include independent contractor agreements, supply agreements, and marketing agreements;
  • Preparing and conducting IP-related client training;
  • Managing invention generation, review and prosecution via facilitated focused invention sessions, brainstorms, and strategic IP harvests;
  • Managing and coordinating invention disclosure review and formulating portfolio-specific intellectual property strategy with respective invention review boards; and
  • Managing the associated budget.

The successful candidate will possess the following:

  • A Juris Doctorate from an accredited law school with 3 years' experience;
  • Good standing in the bar(s) where licensed to practice law with preference for licensure in Minnesota;
  • 3 years minimum legal experience in a wide range of intellectual property matters including patent preparation and prosecution, trademark matters, due diligence activities, licensing or merger and acquisitions, IP litigation support, patent portfolio management and client counseling, preferably with experience at both a law firm and a corporation;
  • Registration with the USPTO;
  • A Bachelor of Science degree in electrical engineering, computer engineering or related field is desired; background in physics, material science, or chemistry will be considered;
  • Strong communication skills - ability to convey and discuss intellectual property issues in understandable terms and to establish, manage and leverage relationships with management, co-workers, relevant technical community, and internal and external partners;
  • Creative thinking and problem solving in a high volume and fast-paced environment, as well as demonstrated ability to lead or collaborate with others across multiple discipline areas to achieve tangible results;
  • Taking initiative, doing more than is expected;
  • Results-oriented team player skills, who works best in a collaborative environment; and
  • Ability to travel both domestically and internationally as necessary.

Apply online via this link: https://seagate.taleo.net/careersection/2/jobdetail.ftl?lang=en&job=147176.

Additional Info
Employer Type: Large Corporation
Job Location: Bloomington, Minnesota