Principal Counsel

Lutech Resources•Houston, TX

About The Position

Job Overview: The Principal Counsel is responsible for interpreting internal or external business issues and recommending best practices. They will be tasked with solving complex Counsel-related problems and will work independently with minimal guidance. The Principal Counsel may be responsible for leading functional teams or projects and is regarded as a specialist in the field of Counsel. As such, they must have in-depth expertise in Counsel as well as broad knowledge of the Counsel discipline within the Legal function.

Requirements

Bachelor's degree in Chemical Engineering, Petroleum Engineering, Chemistry, or similar
Advanced science degree desirable
Bar registration; registered to practice law
4 to 6 years of law firm experience drafting and prosecuting patent applications and managing global patent portfolios; ability to independently prepare and prosecute patent applications
Thorough understanding of Patent Cooperation Treaty patent laws/regulations and good knowledge of at least some foreign patent laws and practices
Some experience in drafting IP-related contracts along with a desire to expand upon existing experience
Excellent written and oral communication skills, including the ability to effectively communicate with business leaders
Outstanding analytical skills with a reliable eye for quality and detail
Ability to manage priorities and deadlines in a fast-paced environment with myriad business pressures
Ability to think beyond the rules of patent filings and prosecution and focus on the practicalities and context of business needs
Ability to work well within a team, taking direction and providing leadership as needed

Responsibilities

Develop and maintain an understanding of the business and technology of the assigned business unit(s), as well as associated patent portfolios
Identify Intellectual Property (IP) risks to assigned business units and manage them in collaboration with the Senior Director/Chief IP Counsel
Negotiate and draft IP-related contracts such as NDAs, technical service agreements, and licenses
Review and advise the company on IP-related risks in complex, high-value transactions
Lead patent committee meetings for assigned portfolios
Efficient exercise of control over outside counsel to minimize external costs
Assist inventors with the writing and submittal of invention disclosures
Instruct inventors on legal requirements for a patentable invention
Advise inventors on data and other information needed to increase the patentability of inventions
Critically review and evaluate submitted invention disclosures
Perform and evaluate patentability searches
Provide support for freedom-to-operate assessments and IP enforcement matters
Maintain expertise in patent laws/regulations and general knowledge of patent laws in at least some foreign jurisdictions
Prosecute patent applications and/or manage outside counsel on the prosecution of patent applications