About the position
As the Deputy Chief IP Counsel - Americas at BASF Environmental Catalysts and Metal Solutions (ECMS), you will play a pivotal role in providing strategic guidance on all aspects of intellectual property (IP) within the region. Your responsibilities will include leading the development of patent application strategies both domestically and internationally, ensuring that there are no legal impediments to the protection of innovations. You will draft, assist, and oversee the preparation, filing, and prosecution of patent applications at relevant Patent Offices worldwide. Additionally, you will be responsible for creating new IP policies and procedures through collaborative efforts across ECMS, updating existing internal policies as they relate to IP. Your role will also involve designing IP portfolios that align optimally with the business strategy, ensuring they are utilized globally to enforce business interests. You will analyze third-party intellectual property rights to assess their scope of protection and their potential impact on ECMS products, processes, and market positioning. Evaluating patent landscapes will be crucial, as you will derive strategic measures such as freedom to operate, invalidity, and licensing strategies, advising the business unit on available options. Furthermore, you will draft and negotiate various agreements containing IP implications, including licensing, collaboration, development, non-disclosure, material transfer, and M&A-related agreements. Advising the company on its rights and obligations under these agreements will be a key aspect of your role. You will collaborate with research and business teams, as well as external collaborators, on IP-related alliance matters, and provide guidance on trademark law and the management of the worldwide trademark portfolio. Managing outside counsel in all aspects of intellectual property matters will also fall under your purview. This position is remote, with a strong preference for candidates located in the East Coast time zone, and will require the ability to conduct virtual meetings with colleagues across EU and Asia time zones.
Responsibilities
- Provide strategic guidance to researchers, business personnel, and leadership on all aspects of intellectual property in the region.
- Lead the development of a patent application strategy domestically and abroad.
- Draft, assist, and oversee preparation, filing, and prosecution of patent applications at relevant Patent Offices worldwide.
- Create new IP policies and procedures through collaborative efforts across ECMS.
- Design IP portfolios that align with business strategy and enforce business interests globally.
- Analyze third-party intellectual property rights regarding their scope of protection and impact on ECMS products and processes.
- Evaluate patent landscapes and derive strategic measures such as freedom to operate and licensing strategies.
- Draft and negotiate licensing, collaboration, development, non-disclosure, material transfer, and M&A-related agreements containing IP implications.
- Advise the company on its rights and obligations under agreements.
- Collaborate with research and business teams on IP-related alliance matters.
- Advise on trademark law and manage the worldwide trademark portfolio.
- Manage outside counsel in all aspects of intellectual property matters.
Requirements
- Completed studies in chemistry, chemical engineering, environmental engineering, or a similar field.
- Law degree with bar admission in at least one US state required.
- Qualification as a US Patent Attorney.
- Minimum of 8 years in the Intellectual Property area in a technical area of responsibility.
- At least 3 years' experience within a Senior IP Counsel role.
- Good understanding of catalysts and clean air technologies is a plus.
- Strong affinity for using Intellectual Property as a business tool.
- Knowledge of and experience drafting IP contracts is a plus.
Nice-to-haves
- Experience in clean air technologies.
- Strong communication skills for virtual meetings across time zones.
Benefits
- Flexible Work Arrangements whenever possible
- Retirement Benefits with company contributions
- Competitive Medical and Dental Plan Options
- Disability and Life Insurance Programs
- Wellness Programs
- Maternity/Paternity Leave
- Infertility & Adoption reimbursement
- Mentoring & Development Programs
- Employee Discounts
- Pet insurance
