Corporate Counsel - Intellectual Property

Are you a dreamer, innovator, thinker and a do-er who believes in contributing to something that makes difference?

Pursue your passion. Join PMI.  

How You’ll Make a Difference

You will assist internal clients with intellectual property registration, management, strategy and protection. Managing and overseeing the work of trademark and copyright enforcement paralegals. The position also will work on commercial contracts and special assignments as necessary.
 

Essential Job Functions

• Trademark management and advice on strategy:
  1. Oversee and analyze results of all mark searches conducted by trademark paralegals.
  2. Conduct full searches as possible, assisted by outside counsel when and as needed.
  3. Interact with business teams on search results and recommendations. That will include creative recommendations on mark adjustments that may be warranted.
  4. Oversee and manage the international registration and mark maintenance function performed by paralegals.
  5. Assess filing and reporting systems and capabilities for trademark practice. Work with paralegals to develop types of reports needed.
• Enforcement:
  1. Oversee and manage group responsible for market scanning and response to reports of trademark and copyright infringement.
  2. Responsible for directing response to claims of infringement by PMI.
  3. Direct approach to remedial action (e.g., sending of cease-and-desist letters, take-down notices, consultation with outside counsel about injunctive and other action, as appropriate)
  4. Developing suite of reports on enforcement actions to be produced by the team.
• Licensing:
  1. Provide support and assistance as needed for the content licensing practice handled by IP Administrator.
  2. Assist with development of new forms of PMI content licenses.
• Research:
  1. Remain current on legal issues emerging with regard to trademark and copyright law in the US and in regions covered by PMI.
• Analysis and recommendations for practice:
  1. Conduct an overarching assessment of PMI IP practice in the first 90-120 days. Determine potential areas for technical and other improvements, as warranted.
  2. Conduct ongoing review of practice, with reporting to Director and GC.
• Commercial Contracts Support
  1. Review, red-line and draft commercial contracts as requested.
• Special Assignments
  1. Directly handle or provide advice on various legal matters as requested or assigned.

What You’ll Bring to the Role

• Juris Doctor degree.
• Bachelor’s degree.,
• Juris doctor or equivalent from an accredited law school.
• 3 – 10 years of legal practice experience, preferably with a combination of law firm and in-house experience.
• Superior verbal and written communication skills.
• Thorough understanding of intellectual property law.
• Excellent interpersonal and customer service skills.
• Excellent organizational skills and attention to detail.
• Excellent time management skills with a proven ability to meet deadlines.
• Strong research, analytical, and problem-solving skills.
• Experience managing junior attorneys or paralegal staff.
• Ability to prioritize tasks and to delegate them when appropriate.
• Ability to function well in a high-paced and at times stressful environment.
• Proficient with Microsoft Office Suite or related software.
• Possible Travel up to 25%

What you can expect from us

We value and nurture an environment of inclusivity and diversity, and a culture of communication and collaboration. Your health, safety and well-being come first, and we believe that you should have time for your work, but you should also have time for you..
 

Join us and you’ll get:
 

• an excellent total package, with compensation and benefits based upon your geographic location.

• skill development opportunities, to help you grow now and into the future.

• access to a global network, to enrich your professional experience.

• flexible options to help balance work time and your time

• award and bonus opportunities.
 
The salary offer will be based on several factors, including the candidate’s demonstrated skills, qualifications and relevant experience. 

Let’s help make the world work better for everyone. Apply today!
 
Project Management Institute, Inc. is committed to providing equal employment opportunities without regard to sex, gender identity, sexual orientation, race, color, religious creed, national origin, physical or mental disability, protected veteran status, or any other characteristic protected by applicable law. As a government contractor, Company Name is subject to Executive Order 11246, the Rehabilitation Act of 1973 (Section 503), and the Vietnam Era Veterans Readjustment Act of 1974 (VEVRAA), all as amended, which require government contractors to ensure nondiscrimination in employment and to take affirmative action to employ and advance in employment qualified persons without regard to sex, gender identity, sexual orientation, race, color, religious creed, national origin, physical or mental disability, protected veteran status, or any other characteristic protected by applicable law.