Patent Counsel – Small Corporation – Des Moines, Iowa

Intoxalock is seeking a Patent Counsel to work in its Des Moines, Iowa, offices. This senior position has responsibility for (i) counseling all levels of the company’s management, business and technical personnel regarding patent and trade secret strategies and risks, (ii) continually assess the technology needs of the company from an IP perspective, (iii) conducting freedom to operate assessments in support of new product launches, (iv) managing overflow patent work with outside counsel, (v) providing due diligence, patent enforcement and transactional support to business acquisitions and assets, and (vi) developing and implementing a strategic strategy to identify, assess and acquire attractive targets to grow the company intellectual property portfolio.

Key Accountabilities:

  1. Protect company innovations by drafting and prosecuting patent applications and collaborating closely with outside counsel on the same, as needed.
  2. Review and clear new and modified products from a patent infringement perspective, and issue written opinions, as needed.
  3. Forge a deep partnership with company leadership to evaluate and protect new product inventions and develop internal processes for same.
  4. Support initiatives to regularly review, identify and enforce patents against third party infringers.
  5. Contribute patent expertise and experience to identify and support merger and acquisition activity, as needed.
  6. Review and approve product labeling, packaging, advertising and promotional materials and other external communications for compliance with applicable patent rules and regulations.
  7. Develop strategies to identify attractive intellectual property based on input from company leadership, prioritize for execution and assist with negotiation and acquisition.
  8. Collaborate with company leadership in preparation, negotiation and review of agreements relating to technology issues.
  9. Train and educate other employees in patent related matters.
  10. All other duties as assigned.

Job Requirements:

  1. BS/BA or higher in mechanical or electrical engineering and JD Degree from an accredited institution.
  2. Deep experience with drafting and prosecuting patent applications and conducting freedom to operate assessments. Significant experience with design patents is preferred, as well as experience in negotiating and acquiring rights to intellectual property.
  3. Demonstrated strong leadership and relationship building skills that lead to successful development, implementation and improvement of patent processes across functions/organizations.
  4. Member of at least one state bar and admitted to practice before the United States Patent and Trademark Office.
  5. Demonstrated broad business orientation and successful ability to partner legal skills with business goals.
  6. Will consider part-time (20+ hours per week) and partially remote work location.

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Additional Info
Employer Type: Small Corporation
Job Location: Des Moines, Iowa