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Chief of IP Counsel - Resume Example & Template

The Chief Intellectual Property Counsel collaborates closely with the General Counsel, business and scientific leaders, technical employees, and marketing. They have a solid understanding of technology and business, as well as the ability to analyse and balance both legal and business considerations while providing recommendations. They work on a variety of hands-on intellectual property projects, such as freedom-to-operate analyses, patent prosecution and strategy, and technology rights acquisition.

Resume of Chief of IP Counsel in Text Format

RUDRANSH NANDA

Phone: 9953776253 | Email: info@getsetresumes.com | LinkedIn: linkedin.com/company/getsetresumes

CHIEF OF IP COUNSEL -leveraging 10+ years of experience

A highly motivated and results-driven Chief of IP Counsel responsible for developing and executing an effective intellectual property (IP) strategy that aligns with our business goals and protects our innovative ideas, inventions, trademarks, and creative works. Expertise with a proven track record of guiding attorneys and cross-functional teams on patent trademarks, and copyrights and ensuring smooth client service.

PROFILE SUMMARY 

  • A Chief of IP Counsel with a proven track record in providing expert guidance on patent, trademark, copyright, and trade secret issues, as well as developing and implementing effective IP protection strategies.
  • Experience-backed skills in managing and overseeing the company's IP portfolio, including the prosecution and enforcement of patents and trademarks. 
  • Strong mentoring abilities, as well as guiding junior lawyers, and collaborating with cross-functional teams, while promoting a collaborative and productive culture.
  • Fully familiar with playing critical role and safeguarding the company's valuable IP assets and supporting innovation and market positioning. 
  • Service oriented, skilled involved in conducting IP due diligence for business transactions, and collaborating with internal teams and external partners to ensure comprehensive IP compliance.
  • Well-versed in identifying and prioritizing IP opportunities that support innovation, market positioning, and competitive advantage.

CORE COMPETENCIES

  • Litigation 
  • Patent Prosecution
  • Business Development
  • Legal Advice
  • Intellectual Property Issues 
  • Analytical Skills
  • Intellectual Property Law
  • Trademark Applications
  • Communication Skills

PROFESSIONAL EXPERIENCE 

Attorney's, New Delhi | Nov 2021 - Present 

Chief of IP Counsel

  • Developing and implementing an overall intellectual property strategy in alignment with the organization's goals and objectives.
  • Identifying opportunities for IP development, protection, and commercialization to support business growth.
  • Conducting regular assessments of the intellectual property landscape and staying updated on industry trends and legal developments.
  • Overseeing the management and maintenance of the organization's intellectual property portfolio, including patents, trademarks, copyrights, and trade secrets.
  • Conducting intellectual property audits to ensure compliance and identify potential risks and opportunities.
  • Developing and executing strategies for the acquisition, licensing, and enforcement of intellectual property rights.
  • Providing expert legal advice and counsel on intellectual property matters to internal stakeholders, including management, R&D teams, marketing, and business development.
  • Evaluating the intellectual property implications of business initiatives, partnerships, and collaborations.
  • Conducting due diligence for potential acquisitions or investments involving intellectual property assets.
  • Developing strategies for the enforcement and protection of intellectual property rights against infringement, counterfeiting, and unauthorized use.
  • Coordinating with internal and external legal teams to initiate and manage litigation, disputes, and infringement claims.
  • Collaborating with law enforcement agencies, regulatory bodies, and industry organizations to combat intellectual property violations.
  • Leading and managing a team of intellectual property professionals, including attorneys, paralegals, and support staff.
  • Fostering a collaborative and innovative environment, promoting knowledge sharing and continuous learning.
  • Collaborating with cross-functional teams, such as research and development, marketing, and business units, to align IP strategies with business goals.

Specter-Bond's Attorney Firm, Delhi | Jan 2015 - Oct 2021 

IP Counsel

  • Managed, protected and expanded the Company's patent portfolio, including proactively identifying and developing patentable intellectual property and working closely with internal clients and/or outside counsel to prepare, file, and prosecute related patent applications.
  • Counselled internal clients, including management and members of the R&D, technical operations, and corporate development teams, on IP risks and opportunities.
  • Reviewed and assisted in the drafting and/or negotiation of nondisclosure, research, license, and other agreements involving the use, transfer, or ownership of intellectual property.
  • Assessed and advised on IP risks and opportunities in complex transactions.
  • Worked with the scientific staff to seek IP protection for clinical and later-stage developments that extended the exclusivity period for company products.
  • Provided IP due diligence support for corporate development activities and manage patentability, freedom-to-operate, infringement, validity, and regulatory exclusivity analyses.
  • Developed a deep knowledge of the Company's existing and planned research and development programs, business activities, and product candidates in the context of competitor activities, industry trends, best practices, laws, and regulations affecting IP.
  • Trained internal client groups and promoted awareness of IP and its implications on various functions within the organization.

Pearson's Law Firm, New Delhi | May 2013 - Dec 2015

Senior Patent Agent

  • Collected research data through experimentation, surveys and the leading of focus groups.
  • Examined inventions from a technical standpoint and understood the concepts behind the originality of the invention.
  • Conducted and ensured QC of special projects assigned by manager and analysed database documents request by trial counsel.
  • Set up interference between pending applications.
  • Patent preparation and prosecution including reissues, re-examinations and appeals to the board.
  • Reviewed documents to ascertain responsiveness to various subpoenas and discovery requests.
  • Determined whether newly-present claims corresponded to the count following the declaration of the interference.
  • Performed and conducted searches relating to patentability (novelty), validity and freedom to operate.
  • Conducted patent examination functions in the computer networking, cyber-security, and cryptography practice areas.
  • Prosecuted numerous office actions, and served as a technical adviser for litigation, preparation and prosecution matters. 

ACADEMIC CREDENTIALS 

EDUCATION: 

Bachelors of Law in Intellectual Property, National Law University, New Delhi, Jul 2009 - Apr 2013

PERSONAL DOSSIER

Languages Known- English, and Hindi 

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