Assistant General Counsel, Patent

Shiseido America - East Windsor, NJ (30+ days ago)3.9


:
  • Work closely with other legal team members to assist in strategically developing SAC’s global patent portfolio, including directing and managing domestic and foreign outside counsel to prepare and prosecute patent applications in diverse and growing fields within the cosmetics industry including formulations, mechanical devices and Internet technologies and business methods

  • Primary Duties & Responsibilities:
  • Work closely with other legal team members to assist in strategically developing SAC’s global patent portfolio, including directing and managing domestic and foreign outside counsel to prepare and prosecute patent applications in diverse and growing fields within the cosmetics industry including formulations, mechanical devices and Internet technologies and business methods;
  • Participate in the effective management of our external legal budget, including regular and annual budget reviews, budget forecasting, and reviewing outside counsel invoices;
  • Communicate with Global Shiseido patent attorneys and collaborate with same in innovation and global patent strategies
  • Review and evaluate invention disclosures and work with inventors and assess patentability;
  • Undertake and supervise patent due diligence for mergers & acquisitions
  • Conduct and supervise freedom-to-operate assessments for new acquisitions or internal product development;
  • Review and analyze competitive products and patents;
  • Review outside counsel performance to ensure work and budget are consistent with SAC goals;
  • Provides legal counsel and strategy to General Counsel, management, product development teams, mergers & acquisition teams and other groups within SAC;
  • Collaborate with General Counsel and legal team in preparing and reviewing various agreements including IP terms;
  • Assist General Counsel and internal litigation counsel and supervise external litigation counsel in patent litigation;
  • Conduct IP and patent training for SAC legal and product development teams and develop best practices for patent-related matters; and
  • Periodic travel required to SAC locations in the US and globally.
    Working Relationships/Key Stakeholders:
  • General Counsel
  • Management
  • Product Development Teams
  • Legal Team
  • Global Shiseido Patent Attorneys
Financial Accountability
  • Participate in the effective management of our external legal budget, including regular and annual budget reviews, budget forecasting, and reviewing outside counsel invoices;

Qualifications & Competencies:
Minimum Qualifications:
  • At least a Bachelor in Science Degree in one or more of the following disciplines: chemical, mechanical, or software engineering and/or a related science;
  • Juris Doctor Degree from accredited law school;
  • Admission to at least one US state bar in good standing; and
  • Admission to U.S. Patent Bar including Registration Number
    Required Qualifications:
  • Strong engineering and legal academic performance;
  • Minimum of 8 years of experience as a working patent attorney, including experience in prosecution of inventions in the chemical formulation, mechanical device, and/or software or Internet-based patent areas with a focus preferably including some experience in the cosmetics industry. Preferred patent experience in a regionally or nationally recognized law firm and also preferred to have at least 2 years experience in a corporate legal team;
  • Experience with preparation of patent applications, prosecution and counseling clients on patent and trade secret matters;
  • Some experience in patent litigation and/or as appearing as a witness in a litigation is preferred;
  • Excellent communication and technical skills; and
  • Experience in presentations, training and related skills.
    Preferred Qualifications:
  • At least 5 years of freedom-to-operate or product clearance experience, preferably some of that experience in the cosmetic industry;
  • At least 5 years of preparing and prosecuting patent applications for chemical formulations, consumer products and mechanical devices and/or Internet- or software-based methods and applied software inventions;
  • At least 5 years patent portfolio management skills;
  • Significant knowledge of patent laws in the US and globally, including Japan, Europe and China;
  • Experience in or knowledge of US and foreign patent office proceedings including AIA proceedings, oppositions, and others; Experience in patent litigation;
  • Experience in due diligence evaluations;
  • Experience in drafting and negotiating IP related agreements;
  • Supervisory skills in training and supervising junior patent attorneys, paralegals and staff; and
  • Patent budgeting and experience in portfolio cost-benefit analysis;
  • In-house experience.