Senior Counsel, Patent Prosecution

Req Number: 183020
Category: Legal
Posted Date: September 20, 2019

Work Location(s): Roseland, NJ, US

ADP is seeking a Senior Counsel that will successfully lead ADP’s Patent Program to ensure that valuable innovations are protected in the US and abroad. This highly visible role offers the opportunity to advise members of senior leadership and product development teams on the patentability of inventions, and to help drive innovation and strategic product development at ADP. In addition to managing all aspects of patent prosecution, responsibilities will include facilitating a patent review board, visiting development labs across the US to understand and identify key innovations, managing an inventor award program, and driving the future of ADP’s Patent Program. The Patent Prosecution Counsel will also be a subject matter expert and resource for ADP’s business units, and will have the opportunity to provide advice and counsel regarding a wide range of patent-related issues, from transactional matters, contract negotiation, and M&A due diligence, to pre-suit investigations, litigation, and licensing.

Don’t miss this chance to mold the future of innovation and patent protection at a Fortune® 250 company!

RESPONSIBILITIES:

  • Manage all aspects of patent prosecution.
  • Conduct invention disclosure interviews to identify and vet patentable ideas.
  • Draft and prosecute global patent applications.
  • Take ownership of initiatives to educate associates on patent program and encourage invention disclosures.
  • Work collaboratively with senior leadership and development teams to stay informed of new innovations and advise on IP protection.
  • Draft and negotiate patent, technology, and data licenses.
  • Prepare Freedom to Operate opinions.
  • Conduct pre-suit patent investigations.
  • Respond to third party subpoenas concerning prior art, technology, and patent issues.
  • Assist with IP due diligence in connection with M&A.
  • Advise on open source licensing and code scans.
  • Some travel will be required.
  • Perform other related duties as assigned, including handling general commercial litigation.

QUALIFICATIONS REQUIRED:

  • Education:
    • B.S., M.S., or Ph.D. in computer engineering, electrical engineering, computer science, or a related field required
    • Juris Doctor degree from an accredited law school.
    • Candidate must be a member of a state bar in one of the 50 states in the U.S.
    • Candidate must be admitted to practice before the USPTO.
  • Experience:
    • 7+ years of experience in patent prosecution, litigation, and licensing.
    • Demonstrated knowledge and expertise in patent preparation and prosecution.
    • Experience managing outside counsel.
    • Experience in patent enforcement activities.
    • Proven skills in development, maintenance, monitoring and management of patent portfolios.
    • Experience with open source licensing.
    • In-house experience a plus.
  • Critical Skills:
    • Excellent written, verbal, and interpersonal communication skills.
    • Strong client/customer service focus.
    • Willing and able to adjust to multiple demands and shifting priorities.
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We’re designing a better way to work, so you can achieve what you’re working for. Consistently named one of the ‘Most Admired Companies’ by FORTUNE® Magazine, and recognized by DiversityInc® as one of the ‘Top 50 Companies for Diversity,’ ADP works with more than 740,000 organizations across the globe to help their people work smarter, embrace new challenges, and unleash their talent. “Always Designing for People” means we’re creating platforms that will transform how great work gets done, so together we can unlock a world of opportunity.


At ADP, we believe that diversity fuels innovation. ADP is committed to equal employment opportunities regardless of race, color, genetic information, creed, religion, sex, sexual orientation, gender identity, lawful alien status, national origin, age, marital status, or protected veteran status. We support an inclusive workplace where associates excel based on personal merit, qualifications, experience, ability, and job performance.

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