• IP Estate Managementincluding IP generation, defense, maintenance, and enforcement primarily in the US. Knowledge of the America Invents Act is needed. 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.
• IP Transactionsincluding both divestitures and acquisitions. Tasks include conducting public and confidential due diligence, undertaking IP analysis, 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 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 Licensingincluding both licensing of technology and patents. Both inbound and outbound licenses are possible. An understanding of US antitrust law relative to licensing is needed. The ability to advise clients on licensing options, patent exhaustion, and IP valuation is critical.
• IP Litigationincluding 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. The ability to do pro bono work through BASF’s relationship with the Pro Bono Partnership is available.
BASF recognizes institutions of Higher Education which are accredited by the Council for Higher Education Accreditation or equivalent
• BS in chemistry, chemical engineering, materials or materials engineering and JD are required
• Graduate degree in chemistry, chemical engineering, materials or materials engineering is preferred
• Must be registered to practice before the United States Patent and Trademark Office (USPTO)
• Must be licensed 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
• Must be a self-starter, be proactive, and take the initiative
• Must be a team player and work well with other BASF patent attorneys, patent agents, support staff and clients
• Excellent organizational skills
• Excellent communication skills including presentation skills and excellent writing skills
• High-level problem-solving skills to review and evaluate legal and/or business problems, and recommend most favorable alternatives
• Ability to electronically file documents with the USPTO
• Ability to use the USPTO's Public and Private PAIRS for checking on the status of filed patent applications
• Ability to use word processing to draft, revise, and finalize agreements with little to no administrative support
• Ability to work in a matrix organization and interact with IP counterparts located in Europe
To apply, visit this link: http://on.basf.com/1203208intelpropfadv.
Employer Type: Other
Job Location: Florham Park, New Jersey