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Assistant General Counsel, Intellectual Property

W. R. Grace & Co
United States, Maryland, Columbia
7500 Grace Drive (Show on map)
February 21, 2023

Requisition ID:21084

Built on talent, technology, and trust, Grace is a leading global supplier of catalysts and engineered materials. The company's two industry-leading business segments-Catalysts Technologies and Materials Technologies-provide innovative products, technologies, and services that enhance the products and processes of our customers around the world. Grace employs approximately 4,300 people in over 30 countries.

Job Description

Grace is seeking an Assistant General Counsel, Intellectual Property to join our Legal team as we grow and develop our organization to build a scalable platform for rapid organic and inorganic growth. This role reports to our Chief IP Counsel and is located in Columbia, MD.

The Assistant General Counsel, Intellectual Property will work closely with the Company's Chief IP Counsel and R&D/business partners to develop and implement a strategic vision for Grace's global intellectual property portfolio. The Assistant General Counsel, Intellectual Property will be a strategic partner and will provide legal advice, guidance and leadership throughout the product development and commercialization process. Responsibilities will include developing, implementing and enhancing key IP processes, developing organizational capability, and managing outside counsel.

  • Help develop and execute a strategic vision for Grace's intellectual property interests.
  • Provide excellent, proactive management of and counseling for Grace's global Patent, Trademark, Copyright and Trade Secret interests.
  • Contribute to the achievement of Grace's growth objectives by developing an in-depth understanding of business unit's Intellectual Property, products, technology, and challenges in order to provide sound strategic legal advice and insights.
  • Partner with Business leaders to execute complex global commercial IP transactions including deal structuring, drafting legal documents and negotiation across a range of areas.
  • Prepare and prosecute patent applications in relevant technology areas.
  • Manage outside counsel.
  • Coordinate with the Chief Litigation Counsel to manage IP disputes and litigation.
  • Build and enhance key IP processes and capabilities
Required Qualifications
  • Demonstrated ability to build and improve IP systems and processes
  • Experience drafting patent applications and managing global IP portfolios, including patents, trademarks, trade secrets, and copyrights
  • Strong customer orientation and business acumen
  • Demonstrated ability to influence teams and key stakeholders
  • Excellent written and oral communication skills.
  • Dedicated to fostering a diverse and inclusive team environment
  • J.D. with strong academic record and active member in good standing of a State Bar. Chemical engineering undergraduate or graduate degree preferred.
  • Minimum of 7 years of intellectual property experience, with at least 5 years in-house and with significant experience in a large and sophisticated corporate environment.
  • Extensive intellectual property experience with global portfolio including patents, trademarks, and trade secrets
  • Registered to practice before the U.S. Patent Office
Preferred Qualifications
  • Chemical engineering background
  • Familiarity with filing and prosecuting Trademarks
  • Medical, Dental, Vision Insurance
  • Life Insurance and Disability
  • Grace Wellness Program
  • Flexible Workplace
  • Retirement Plans
  • 401(k) Company Match - Dollar to dollar up to the first 6%
  • Paid Vacation and Holidays
  • Parental Leave
  • Tuition Reimbursement
  • Company Donation Match Program

Grace is not accepting unsolicited assistance from search firms for this employment opportunity. Please, no phone calls or emails. All resumes submitted by search firms to any employee at Grace via email, the Internet or in any form and/or method without a valid written search agreement in place for this position will be deemed the sole property of Grace. No fee will be paid in the event the candidate is hired by Grace as a result of the referral or through other means.