IP Counsel

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Job Description:

1. Job Description
An IP Counsel has a primary responsibility of providing IP legal services to several of 3M China’s businesses and staff functions (referred to as “clients”).  In country, the IP Counsel collaborates with counterparts in the Office of General Counsel and Compliance and Ethics and Compliance team and other staff functions to provide cost effective, high quality IP services to the clients. The IP Counsel will be a business partner whose role is to create IP solutions that
provides a competitive advantage to 3M CHK.

2. Essential Job Functions
a) IP generation: work directly with technical team to ensure inventions are captured in high quality invention submissions (IS); thereafter, validate the IS through 3M’s electronic systems and then lead meetings with technical managers and inventors making local recommendations to the global divisions whether the IS should be converted into a patent application.
b) Draft/review patent application, work with local outside counsel and global division’s IP attorney to prepare the patent application for filing; draft/review responses to office actions.
c) Provide freedom to operate opinions and guidance to clients as needed.
d) Review commercial contracts containing IP clauses to ensure that they are within 3M’s guidelines.
e) Collaborate with global division IP counsels to draft IP centric agreements, such as technical collaboration agreements, R&D research funding agreements, and university agreements.
f) Provide training and guidance to technical and business teams on IP processes and best practices.
g) Provide client counseling on IP related matters to the local businesses

3. Experience and Qualifications
- Bachelor’s degree or above from an accredited university with a technical background in materials science, chemical engineering, polymer science or chemistry
- Qualified as a Chinese patent attorney; bar qualification would be a plus
-Solid experience in patent drafting, prosecution, and invalidation, ideally within a multinational company or reputable law firm
- Strong communication and collaboration skills with the ability to work effectively with technical and business stakeholders
- Demonstrated business acumen and the ability to translate technical innovation into strategic IP value
- Fluent in Mandarin; proficient in English for business and technical communication.

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