We are looking for the right people — people who want to innovate, achieve, grow and lead. We attract and retain the best talent by investing in our employees and empowering them to develop themselves and their careers. Experience the challenges, rewards and opportunity of working for one of the world’s largest providers of products and services to the global energy industry.

Overview:

• Manage Intellectual Property (IP - patents, trade secrets, trademarks and copyrights) for a Fortune 500 energy services and technology company, as part of a sophisticated in-house legal team.
• Company is based in the U.S. but has operations worldwide.

• Attorney position that is responsible for providing legal advice to clients on a wide range of IP matters, including: engaging and managing outside counsel, managing patent prosecution docket, providing guidance on internal IP development, including managing brainstorming sessions and advising on foreign protection activities, managing and advising internal clients regarding freedom to operate studies for new product development projects, managing infringement risk (including analysis and response to infringement assertions), and managing IP transactions (including generating and reviewing joint development and other IP transaction agreements), and managing IP due diligence.
• 5+ years’ experience, prefer 8-10 years of patent prosecution/litigation experience in oil and gas technologies. Software and licensing experience beneficial.

• This position will report to the Chief Patent Counsel in the U.S. and will be located in Houston, TX. This attorney will have primary responsibility for IP activities associated with certain client operations and products, but will work as part of the company IP team.

Responsibilities and Accountabilities:

The ideal candidate will contribute to the implementation of the company's overall strategy for the protection of intellectual property. Duties include but are not limited to:

• Supporting the company's patent strategy and engaging in activities to enhance the company's patent portfolio.
• Drafting legal documents, including joint development and non-disclosure agreements.
• Managing the preparation and prosecution of patent applications, including coordination with outside US and foreign patent prosecution counsel.
• Managing one or more patent committees.
• Managing patent office proceedings, e.g., oppositions, IPRs and other adversarial proceedings in patent offices and courts.
• Conducting and managing freedom-to-operate studies to avoid patent disputes, including infringement analysis and competition patent portfolio analyses, managing and reviewing outside counsel opinions.
• Ensuring that internal worldwide clients are fully aware of the significance of intellectual property matters, including providing intellectual property training.
• Resolving legal issues and providing legal advice and counsel in relation to intellectual property matters.
• Working with outside counsel on IP matters.
• Communicating advice and status of IP matters to internal clients and IP management team.

Critical Competencies/Behaviors:

• Strong IP legal skills.
• Ability to recognize the business consequences of legal advice.
• Strong, logical legal mind with the ability to apply abstract concepts of law to make timely, well-reasoned and appropriate decisions to solve problems.
• Strong advocacy skills.
• Ability to function autonomously, yet understands necessity of advising management of work progress and any unusual situations.
• Multitasking skills essential.
• Ability to work with cross-functional teams.
• Strong interpersonal skills including ability to engender trust, respect and confidence.
• Excellent written and oral communication skills including the ability to communicate and interact effectively at all levels of the organization.
• Exemplary personal and professional integrity and business ethics. Commitment to diversity and a respect for others.

Education and Licenses:

• Bachelor's Degree or higher in engineering or related technology field, and oilfield service technologies experience preferred.
• U.S. qualified lawyer (J.D.) with current state license.
• Registered to practice as patent attorney before the U.S. Patent and Trademark Office.

Work Experience:

• Minimum 5+ years active practice within the intellectual property field (8+ preferred), including preparing and negotiating license agreements and other intellectual property related contracts, experience in preparation and prosecution of patent applications in the U.S. and/or in other jurisdictions (e.g. PCT, EPC), evaluating and preparing patent opinions, and supporting litigation of patents and other intellectual property disputes.

Candidates having qualifications that exceed the minimum job requirements will receive consideration for higher-level roles give (1) their experience, (2) additional job requirements, and/or (3) business needs. Depending on education, experience, and skill level, a variety of job opportunities might be available from Counsel to Sr Counsel.