Legal Director, Intellectual Property
About this role:
We are seeking an Intellectual Property attorney to join our legal department, primarily responsible for managing and providing advice and counsel on intellectual property matters globally. Reporting to the Group Vice President, Commercial Legal Team Lead, the Intellectual Property Legal Director will work closely with multiple internal functional groups and outside counsel. The Legal Director will be the primary practitioner entrusted with hands-on responsibilities for the prosecution and maintenance of US patents and all domestic and foreign trademark matters; advice and counseling on trade-secrets, domain names and related disputes; enforcement of copyrights and trademarks; and providing litigation advice on IP disputes. The Legal Director will also provide IP support in routine operational and transactional matters (e.g., drafting and/or reviewing IP provisions in contracts, evaluating third party patents, and identifying potential in-licensing opportunities).
The successful candidate will possess extensive knowledge of US and international intellectual property laws. The candidate will also have strong oral and written communication skills and will have the ability to work independently within a dynamic and fast paced environment. Excellent client management skills and the ability to prioritize competing demands will be necessary.
What you’ll do:
- Management of trade secrets
- Prosecution and maintenance of all domestic and foreign trademark matters
- Prosecution and maintenance of US patent applications/patents
- Guidance on policy development with respect to intellectual property matters
- Support and assistance on other contract and transaction matters in which Gartner may engage
- Guidance to relevant constituents on key intellectual property contracting issues
- Enforcement and protection of Gartner copyrights and trademarks, including cease and desist activity
- Management of intellectual property licensed from third parties
- IP law guidance and assistance to other colleagues in the Legal Department in in a highly collaborative and team-oriented fashion
What you’ll need:
- Qualified lawyer in a European jurisdiction, or a JD from a US ABA accredited top tier law school
- At least 8 years of relevant IP and commercial/business law experience
- Strong knowledge of US IP case law, rules and regulations
- In-depth knowledge of trademark law, including Madrid protocol and US supplemental and principal trademark registers
- In-depth knowledge of ACPA, UDRP, DMCA and other legal mechanisms
- Understanding of US patent law, including drafting & prosecuting patent portfolios, due diligence assessments, infringement and validity analyses, and risk evaluation and mitigation strategies
Who you are:
- Motivated, high-potential performer, with demonstrated ability to influence and lead
- Strong communicator with excellent interpersonal skills
- Able to solve complex problems and successfully manage ambiguity and unexpected change
- Teachable and embracing of best practices and feedback as a means of continuous improvement
- Consistently high achiever marked by perseverance, humility and a positive outlook in the face of challenges
Job Requisition ID:36150
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