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First Quality was founded in 1989 and has grown to be a global privately held company with over 4,000 employees. Its corporate offices are in Great Neck, New York, with manufacturing facilities and offices in Pennsylvania, South Carolina, Georgia, and Canada. First Quality is a diversified family of companies manufacturing consumer products ranging from Absorbent Hygiene (adult incontinence, feminine care, and baby care), Tissue (bath and towel), and Industrial (print and packaging materials), serving institutional and retail markets throughout the world. First Quality focuses on private label and branded product lines.

This role will provide a full range of IP counseling services with specific emphasis on strategic patent development and execution, as well as risk assessment and management of complex IP and product regulatory legal issues.

RESPONSIBILITIES:

• Provide a full range of senior-level IP counseling to a variety of business units and R&D groups, including hands-on involvement in the procurement of IP rights that support their development and commercial plans.
• Conduct preliminary patent and trademark research.
• Coordinate trademark filing and maintenance.
• Develop and execute business-focused patent strategies to enhance marketplace positions.
• Manage and direct outside counsel activities relating to the drafting, filing and prosecution of patent applications. Providing initial drafts and/or direction on office action responses.
• Review and analyze third-party patents and prepare, or oversee the preparation of, freedom-to-operate opinions and advise the business on any associated risks.
• Conduct IP training for internal R&D and business associates.
• Prepare confidentiality agreements, joint development agreements and IP clauses contained in commercial contracts.
• Establish and maintain a detailed knowledge of the commercial and technology development strategies of the various businesses
• Stay abreast of the patent positions being established by key competitors.
• Review product regulatory and compliance requirements and coordinate as necessary to effectuate compliance.
• Understanding of trade dress and ability to review for potential risks.
• Conduct review and approve of marketing and packaging materials for compliance and intellectual property issues.
• Drafting of patent applications may be required.

QUALIFICATIONS:

• Minimum of 7 years of proven experience working on a wide range of IP and product related legal matters in a law firm or corporate setting, including patent preparation and prosecution, opinion work, agreement work and handling trade secret matters. Exposure to trademark law a plus.

• J.D. degree and a member in good standing of at least one state bar and registered to practice before the USPTO. An undergraduate degree in engineering, chemistry or similar discipline preferred.

• Demonstrated high integrity and ethics in all dealings, non-political in conduct, while understanding internal and external dynamics.

• Business-focused individual with a proven ability to add value through the development and execution of strategic IP initiatives. Must approach IP with a strategic mindset by anticipating future business, competitive and legal risks.

• Demonstrated ability to identify and explain risks or impediments to the business brought about by IP-related issues and in developing and clearly and concisely articulating strategies for overcoming these issues.

• Partners effectively with relevant stakeholders at all levels of the organization and across all phases of product development & commercialization offering creative solutions to complex technical and legal issues.

• Must possess exceptional problem solving and work-load management skills, along with the ability and agility to manage multiple tasks in a fast-paced environment and consistently meet deadlines. In addition to top-notch legal skills and a strong ethical center, must also have excellent interpersonal, strategic thinking, communication, and organizational skills.

• Some exposure to IP litigation a plus.

• Compliance and regulatory experience preferred

First Quality is committed to protecting information under the care of First Quality Enterprises commensurate with leading industry standards and applicable regulations. As such, First Quality provides at least annual training regarding data privacy and security to employees who, as a result of their role specifications, may come in to contact with sensitive data.

First Quality is an Equal Opportunity employer. All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, national origin, disability, sexual orientation, gender identification, or protected Veteran status.