Posted Apr 17

Corporate Counsel Senior - IP

Jacksonville, FL Full Time

Job Summary:

Intellectual Property Transactions/Technology Attorney with 5 to 10 years of experience with a background in financial services and/or computer software industry. The candidate will be primarily responsible for handling complex technology transactions such as licensing, outsourcing, and commercial transactions, and related intellectual property issues in connection with joint ventures, mergers and acquisitions, and other transactions. Additionally, the attorney will work with the Chief Intellectual Property Attorney and IP legal team to manage, maintain and enforce FIS’ Intellectual Property, including the trademark and patent portfolios, and handle a variety of intellectual property issues including litigation matters, particularly intellectual property infringement claims. This attorney will report to FIS’s Chief Intellectual Property Attorney and interact with the legal, business and development teams. Provides counsel to both the business and legal teams.

Primary responsibility is for matters related to intellectual property transactions. In addition, other responsibilities are assisting the Chief IP Counsel in order to:

  • Manage and oversee the prosecution of patent, trademark and copyright applications; both in the US and International jurisdictions.
  • Develop and implement strategy, procedures and programs to develop and maintain the intellectual property portfolios and legal rights of the Company, with an emphasis on the patent portfolio strategy and evaluation of new inventions.
  • Assist in patent litigation and pre-litigation activities, including working with the Intellectual Property Counsel and outside counsel to develop strategies to defend, resolve and prevent various forms of litigation.
  • Assist Legal Team in contract review and analysis regarding intellectual property issues.
  • Prepares applications for patents, copyrights, and trademarks and presents applications to the U.S. Patent and Trademark Office (USPTO). Drafts, negotiates, and interprets IP licenses and contracts.
  • Evaluates the validity of competitors' patents and potential company product infringement upon valid patents of competitors.
  • Responsible for pre-patent filing review, providing legal advice to the company concerning the patent viability of its inventions and the advisability of filing patent applications covering the company's inventions.
  • Conduct administrative activities related to intellectual property records/databases and other general duties as assigned.

  • Requires a Juris Doctor (JD) degree.
  • Requires the incumbent to be admitted to practice law and a member in good standing of any State Bar.
  • Requires 5 to 10 years of experience in intellectual property and intellectual property transactions.
  • Registration to practice before the U.S. Patent and Trademark Office (USPTO) is desired.
  • Professional role. Highly-skilled with extensive proficiency. Uses wide-ranging experiences, professional concepts and enterprise objectives to resolve complex issues in creative and effective ways. Works on complex projects as a project leader or subject matter expert. May act as a team lead in coordinating the activities of other personnel. Typically requires 5-10 years of experience as a practicing attorney on intellectual property matters and transactions.

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