Associate General Counsel
Department: Office of General Counsel
The Associate General Counsel reports to the Vice President and General Counsel to advance Northwestern's intellectual property efforts, technology transfer, commercialization activities, and partnership and collaboration opportunities. This position works closely with the University's Innovation and New Venture Office (INVO) and will manage, develop and maintain legal oversight of all intellectual property (IP) related needs including: (i) advising clients on legal provisions in IP related agreements, (ii) leading University efforts in patent enforcement, (iii) providing strategic input on IP coverage for large technology portfolios, (iv) advising on Bayh–Dole and other compliance and regulatory requirements, and (iv) initiating and maintaining relationships with external counsel when needed. This individual works cross–functionally with University administration, faculty, researchers, and business development professionals and is a key member of both the Office of General Counsel and INVO. The Associate General Counsel will recommend and implement policies and procedures to ensure compliance with relevant laws and industry practices while providing support and guidance to Northwestern faculty and researchers.
Specific Responsibilities :
Deliver accurate and timely information to the Associate Vice President for Innovation & New Ventures, faculty, researchers, and business development professionals; Work with Northwestern's General Counsel's Office as required; Liaise with other University community members, regulatory agencies and third–party resources to identify issues and provide guidance and recommendation on compliance matters;
Collaborate with INVO on the development and implementation of intellectual property strategies, working with external counsel as needed;
Review, negotiate, and advise on a broad range of contracts and agreements and provide legal advice regarding complex transactions to ensure alignment with institutional goals;
Work to offer advice and counsel regarding a variety of intellectual property issues, including the creation and protection of intellectual property arising from the university's research efforts, licensing, and new venture creation activities, ;
As needed, advise on freedom to operate studies, analyses of third party patent positions and competitive patent intelligence;
Review and understand the institution's patent portfolio; assess possible enforcement issues;
Manage trademark procurement activities, as needed;
Other duties/projects as assigned; and
Participate in regular team meetings with the Office of General Counsel and INVO.
Performs other duties as assigned.
Juris Doctorate Degree from an A.B.A. accredited Law School
Registration to practice before the U.S. Patent and Trademark Office
A minimum of seven years of professional experience in a number of patent functions: enforcement, drafting and prosecution, patent opinion drafting and/or licensing/agreement work in the industry required
Admission to the Illinois State Bar and/or license to practice in–house in Illinois required
Experience utilizing creative and proactive approaches to intellectual property strategies required
Excellent written and verbal communication skills required
Professional demeanor with a high degree of self–motivation and organization required
Highly organized and detail–oriented in order to track multiple open issues in a timely, efficient, and accurate manner required
Resourceful, flexible and able to anticipate and resolve problems effectively required
Demonstrated track record of developing and managing relationships required
The ability to communicate with clarity, tact, and courtesy and demonstrate judgment and discretion in the sharing of sensitive information required; the ability to work independently without close supervision required.
Experience in higher education, preferably in IP related issues in research–intensive institutions or experience in both a major law firm and corporate environment;
Advanced degree in chemistry, life science, or related field preferred;
Excellent oral, written, interpersonal, organizational, and problem–solving skills required, plus the ability to work collaboratively, closely, and effectively with a diverse group of University faculty, researchers, and staff;
Experience in copyright, trademark and other IP areas;
Patent experience with life sciences, therapeutics, and medical devices is strongly preferred;
A willingness to work independently and with others in other areas of law beyond intellectual property;
A capacity for understanding the relationship of specific tasks to the broader operation of the administrative functions and mission of the university; and
A demonstrated passion for service excellence and commitment to exceptional quality, as well as high levels of energy.
Target hiring range for this position will be between $250,000 to $290,000 per year. Offered salary will be determined by the applicant's education, experience, knowledge, skills and abilities, as well as internal equity and alignment with market data.
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