• IP transaction experience in both divestitures and acquisitions including public and confidential due diligence, IP analysis and advice, agreement preparation, and closing.
• Focus on both patents and unpatented know-how is needed.
• Ability to perform well under tight time constraints, interact well with other M&A team members especially commercial attorneys, and provide timely advice on any risks to the client.
• Ability to successfully integrate acquired IP into BASF is also essential.
• Licensing experience including technology and patents in and out.
• Understanding of US antitrust law relative to licensing is needed.
• Ability to advise clients on licensing options, patent exhaustion, and IP valuation is critical.
• Experience managing client patent estates including IP generation, defense, maintenance, and enforcement.
• Experience with US reexaminations is considered a plus.
• Experience with foreign patent law and in particular European patent law is a plus, although this position focuses on US law and US patents
This position will be located in Wyandotte, MI. Travel as needed to client locations in North America and Europe, client business meetings, and BASF's German parent in Ludwigshafen 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 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 patent attorneys, patent agents, and support staff
• Excellent organizational skills
• Excellent communication skills including presentation skills and have 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/1203209intelpropfadv.
Employer Type: Other
Job Location: Wyandotte, Michigan