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Intellectual Property Counsel - Florham Park, NJ


Job Field: LEIN - Legal & Insurance
Location: Florham Park, NJ, US
Company: BASF Corporation
Job Type: Standard
Job ID: EN_US_1703243

We are an equal opportunity employer and all qualified applicants will receive consideration for employment without regard to race, age, citizenship, color, religion, sex, marital status, national origin, disability status, gender identity or expression, protected veteran status, or any other characteristic protected by law.


At BASF, we create chemistry through the power of connected minds. By balancing economic success with environmental protection and social responsibility, we are building a more sustainable future through chemistry. As the world’s leading chemical company, we help our customers in nearly every industry meet the current and future needs of society through science and innovation. We provide a challenging and rewarding work environment and are always working to form the best team—especially from within, through an emphasis on lifelong learning and development. And we are constantly striving to become an even better place to work. BASF has been recognized by Forbes Magazine and Glassdoor as one of America’s Best Employers in 2016. Come join us on our journey to create solutions for a sustainable future!

Where the Chemistry Happens… The primary responsibilities of the Counsel, Intellectual Property (IP) position are to provide, in a timely and effective manner, the highest-quality legal support for a broad range of business-oriented IP services for, and to build partnerships with, assigned R&D and business units within BASF Corporation. You must possess in-depth knowledge of IP transactional practice and of US patent and intellectual property law. In your role as Counsel, Intellectual Property, you will have direct responsibility for providing the following legal support primarily to various BASF businesses within the Performance Chemicals division. Transactional Responsibilities, handled directly:

  • Collaborate with R&D and business unit clients to timely identify all agreements necessary to implement their respective objectives.
  • Advise R&D and business unit clients on IP contract issues and interpretation.
  • Conduct IP due diligence for M&A transactions.
  • Review, negotiate, and draft a broad range of contracts such as:
    • Confidentiality agreements with universities, research organizations, commercial partners and private sector institutions to implement long-term strategic and commercial objectives for the subject IP;
    • Material transfer agreements covering early-stage, proprietary chemistry and/or biotechnology materials and/or products;
    • Joint development agreements and other collaborative agreements;
    • Service agreements;
    • Consultant agreements;
    • License agreements, including complex, cross-border in- and out-license agreements, cross-license agreements, development license agreements, and license and supply agreements;
    • Technology transfer agreements;
    • IP asset acquisition agreements; and
    • IP asset divestiture agreements.

Non-Transactional Responsibilities, handled directly, with the global IP team, and/or through management of outside counsel:

  • Advise on patentability, validity, and infringement.
  • Serve as senior IP advisor to your assigned R&D and business unit clients.
  • Manage patent portfolios.
  • Develop and implement patent strategies to protect innovations.
  • Conduct freedom-to-operate assessments.
  • Effectively communicate with people at all levels of the Company, including communicating complicated technical and legal issues to non-technical personnel, to enable critical decisions on IP and IP litigation matters.
  • Work closely with other members of the IP, Legal and other functions, e.g., Tax, Insurance and HR, on regional and global levels.
  • Provide IP litigation support, working in conjunction with BASF’s US litigation attorneys and global IP team.
  • Conduct and/or coordinate IP training, working in conjunction with BASF’s US commercial attorneys and global IP teams.
  • Employ deft social skills to mediate between, and balance, occasional competing business units’ interests.

Create Your Own Chemistry: What We Offer You… Adding value to our customers begins with adding value to you. You@BASF is the suite of benefits, perks, programs and unique opportunities we offer to support you—the whole you—in all stages of your life and career. With you@BASF, you create your own chemistry. The total rewards that you receive as a BASF employee go way beyond a paycheck. From competitive health and insurance plans, to robust retirement benefits that include company-matching contributions, to making sure you never stop learning, we believe investing in you is investing in our success. Working for a large, global organization, you’ll have a chance to grow professionally and personally, expand your network and build a rewarding and dynamic career.

Qualifications - BASF recognizes institutions of Higher Education which are accredited by the Council for Higher Education Accreditation or equivalent

Ingredients for Success – What We Look for in You….

  • JD degree and a license to practice law in at least one US state is required.
  • Admission to practice before the USPTO is required.
  • Minimum 8 years of IP practice is required.
  • In-house counsel experience is preferred.
  • Experience in one or more fields of lubricant oil additives, compounded lubricants, plastic additives, water treatment chemicals, paper chemicals, kaolin processing and applications, and personal care is preferred.

Nearest Major Market: New Jersey

Job Segment: Law, Intellectual Property, M&A, Patent, Legal, Management

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