BASF 
is seeking an IP Counsel to work in Florham Park, N.J. The IP Counsel is responsible for:
- IP Estate Management including IP generation, defense, maintenance, and enforcement primarily in the US. An understanding of foreign patent law and in particular European patent law is also required. The ability to advise clients on patent coverage is critical. Experience with US post grant procedures is a plus.
- IP Transactions including both divestitures and acquisitions. Tasks include conducting public and confidential due diligence, undertaking IP analysis and advising clients of risks, 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 outside counsel, and provide timely advice on any risks to the client is essential. Overseeing the integration of the acquired IP into BASF is also a critical part of this position.
- IP Licensing including both licensing of technology and patents with both inbound and outbound licenses are possible. An understanding of US antitrust law relative to licensing is needed. The ability to advise clients on licensingoptions, 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.
- Freedom to Operate Opinions including new product and process definitions, third party patent searching, and opinions. 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 North American headquarters in Florham Park, New Jersey. Travel as needed to client locations in North America and Europe, client business meetings,and BASF’s parent in Ludwigshafen, Germany will be required. This position reports to IP Assistant General Counsel who reports to the General Counsel.
Qualifications
- An undergraduate degree in the chemical related arts such as chemistry, chemical engineering, materials, or materials engineering, and preferably, a graduate degree in the chemical related arts
- Registration to practice before the United States Patent and Trademark Office (USPTO)
- A license in at least one state, preferably New Jersey, and a member in good standing with any mandatory CLE completed
- Minimum 10 years of experience practicing before the USPTO
- A self-starter who is proactive and takes the initiative
- A teamplayer who can work well with other BASF patent attorneys, patent agents, support staff, and clients
- Excellent organizational skills; -Excellent communication skills including presentation and writing skills
- High-level problem-solving skills to review and evaluate legal and/or business problems, and recommend alternatives
- The ability to electronically file documents with the USPTO;
- Knowledge of the USPTO’s Public and Private PAIRS for checking on the status of filed patent applications
- The ability to use word processing to draft, revise, and finalize agreements with little to no administrative support
- The ability to access internal database for IP related information
- The ability to work in a matrix organization and interact with IP colleagues located in Europe
Candidates from corporate law departments and law firms will be considered.
Contact
If interested, please apply at: http://jobs.basf.us/job/
Availability: Day Job | Type of Job: Standard
Additional Info
Employer Type: Large Corporation
Job Location: Florham Park, New Jersey