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Company: Entegris
Position: Intellectual Property Counsel
Location: Billerica, MA

Description: Entegris is seeking an Intellectual Property Counsel for our Billerica, MA location to play a strategic role in the growth and protection of the company’s IP assets. This IP Counsel will support, counsel and partner with the Micro-Contamination business of the company, whose technologies relate to contamination control, purification, filtration, and critical materials handling. This business produces products that ensure liquid, gas and air purity.

Primary Responsibilities:

  • Prepare, present and implement a global IP strategy using IP landscape and competitor reviews;
  • Manage a global IP portfolio;
  • Act as the legal gateway for new product introduction to market activities, including landscape, freedom-to-operate, invalidity and novelty searching activities;
  • Business partner to R&D and business managers, located in various countries, to advise and find solutions to complex IP issues
  • Work with and manage outside counsel to crystallize inventions, effectively and strategically prosecute patent applications, and ensure claiming/patenting strategy satisfies the company’s technology strategy and business’ needs;
  • Harvest, evaluate, and protect inventions and innovations;
  • Draft IP related agreements and partner with business to negotiate, prepare, and/or review, for example, SRAs, JDAs, NDAs, and Technology Licenses;
  • IP Litigation management, support and strategy;
  • Provide IP training to R&D and business clients;
  • Draft at least six patent applications annually, and prosecute patent applications – US and international;
  • Conduct periodic meetings with business units to discuss intellectual property issues, portfolio reviews, and invention disclosure assessments;
  • Perform risk assessments and deliver timely and informed legal counsel

Contact: Sue Lee, sue.lee@entegris.com

Qualifications:

Successful candidates must have the following qualifications:

  • J.D. from ABA accredited school
  • B.S. degree (or higher) in Chemical Engineering, Material Science, or Chemistry; other engineering and/or science-related disciplines may be considered;
  • Registered to practice at the US Patent and Trademark Office and licensed/admitted in at least one state bar
  • Minimum 5 years of experience as a patent attorney, exposed to a broad range of IP including patent preparation and prosecution experience, creating an IP strategy, managing a docket, preparing clearance opinions, IP transactions, and counseling clients on IP –related issues
  • Minimum 2 years of experience in a corporate legal department
  • Experience drafting, reviewing and negotiating IP-related agreements;
  • Excellent, demonstrable understanding of intellectual property, including patents; trade secrets and confidential information; trademarks and service marks; and, copyrights (will require writing samples of patents prepared);
  • Demonstrable understanding of patent protection concepts and practices, including the America Invents Act, and current patent case law;
  • Some patent infringement litigation experience;
  • Problem solving and solution-oriented thinking;
  • Self-motivated, and an effective communicator, written and verbal;

Other qualifications that make Excellent and Distinguishable candidates:

  • Familiarity with PTO practice in Asia countries.
  • Ability to read and/or understand Chinese, Japanese, or Korean language
  • Experience working within the semiconductor industry a plus.

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