Associate General Counsel, Intellectual Property And Innovation

The Company: GIA is the world's foremost authority in gemology. GIA is a global organization with headquarters located in Carlsbad, CA. GIA in Carlsbad boasts a 17-acre ocean view campus that accommodates approximately 800 of its 3,000 total employees worldwide. It offers many competitive health and commuter benefits that promote the well-being of its employees as well as that of the environment.

What to expect:

• Hybrid role. Two days/week onsite at our Carlsbad, CA headquarters

• We offer competitive medical, dental, vision and matching 401-K plans (up to 8%)

• Paid vacation, sick and holidays, tuition assistance, commuter benefits

• On-site café

OPPORTUNITY OVERVIEW

GIA's Legal Affairs team is the Institutes dedicated in-house law firm, policy consultant, thought partner, and all-around advisor for the Institute's global legal matters and programs. We champion GIA's mission and strategies, role-model its values, and protect our Institute in concert with our colleagues. We're a small and high-performing team with a great culture and a passion for delivering big-impact results.

GIA, a mission-driven organization with nearly a century of innovation, is seeking an experienced Associate General Counsel, Intellectual Property & Innovation, who will be reporting to GIA's Senior Vice President & General Counsel. The ideal candidate will excel in strategic thinking to cultivate, protect, and commercialize intellectual property from the Institute's R&D and education programs, enforce and protect the Institute's IP and brand, and establish internal processes to identify patentable material and determine formal IP protection. This role involves close collaboration with scientific teams developing next-generation diamond and jewelry verification tools and processes, as well as various functions researching rare minerals and stones. This position will be expected to be able to handle complex, multidimensional projects and transactions and will be a trusted member of the Institute's small and focused Legal Affairs Team.

ACCOUNTABILITIES AND RESPONSIBILITIES

Oversees the management of the Institute's intellectual property portfolio, including patent prosecution, copyright registration, and trademark protection;

• Provides guidance and advice related primarily to collaborative research, research compliance, intellectual property rights and assets, innovation, and research ventures;

• Works closely with the scientific team to proactively develop and implement intellectual property strategy with respect to the Institute's technological areas of interest;

• Establishes and maintain processes for managing invention disclosures, including collecting and screening disclosures, conducting inventor interviews, and presenting disclosures at IP Committee meetings;

• Takes responsibility for pre-patent filing review, providing legal advice to the Institute concerning the patent viability of its inventions and the advisability of filing patent applications covering the Institute's inventions;

• Develops, coordinates, and reviews patent research and analysis projects, including prior art searches, competitive intelligence, landscapes, patentability analyses, portfolio analyses, infringement/non-infringement analyses, validity/invalidity analyses that drive strategic acquisitions and technology development;

• Enforces the Institute's IP and protect and develop the Institute's brand, including drafting demand letters, performing research on infringing parties, and initiating proactive brand and technology protection strategies;

• Provides internal education and trainings related to IP; and

• Provides such other IP support as needed.

Provides guidance and legal advice to all areas of the Institute including academic and administrative areas focusing on research, applied research, commercialization, intellectual property, licensing, technology transfer, and education portfolios;

• Negotiates and supports research programs and in-licensing of technology with and from academic and other research institutions;

• Negotiates and supports other tech transactions, such as commercial in-licenses, testing agreements and the like;

• Reviews outside counsel work to ensure the work, methodology, strategy and costs meet the Institute's expectations

• Collaborates with commercial legal counsel, including preparing and reviewing research and development agreements, confidentiality agreements, license agreements, manufacturing agreements, and consulting agreements, and otherwise counsel on IP transactional matters;

• Other duties and responsibilities as assigned or required.

WHO YOU ARE

You are a respected and collaborative enterprise leader whose orientation is the larger organization. Your expertise and education are essential in helping guide and lead the legal and compliance teams to contribute to enterprise results. You demonstrate the utmost integrity and a growth mindset. You are a team player and have effective relational skills that are visible internally and externally. You have strong business and industry experience and acumen.

EDUCATION AND EXPERIENCE

• Juris Doctorate and Bar admission, with a minimum of 8-10 years of experience working as a patent attorney and counseling clients on intellectual property issues.

• Top law school, significant IP focused law firm, and prior in-house experience preferred.

• Scientific background preferred.

• USPTO registration in good standing.

• IAPP Privacy certification a plus.

• Prior experience as in-house IP counsel, supporting natural minerals, fashion and/or technology company with a diverse portfolio of proprietary technologies and developing and implementing internal procedures relating to IP protection and confidentiality.

• 10+ years with both patent and trademark prosecution preferred.

• 10+ years with trademark enforcement actions, including UDRPs and ACPA litigation preferred.

• Experience advising on cloud computing, software licensing, SaaS, data governance, privacy, and information security.

• Experience training and advising on open-source licensing issues.

• Significant freedom-to-operate or product clearance experience.

• Experience advising on, drafting, and negotiating intellectual property provisions of complex agreements, including licensing, collaboration, and/or other corporate or commercial transactions.

RELATIONAL

• Demonstrated ability to build relationships and become a trusted advisor and resource for colleagues throughout a global organization as well as to be credible with outside counsel, board members, the industry, outside affiliations, and members of the public.

• Builds effective teams. Experience managing others and bringing out the best talent in employees. Influences without authority to lead others who may not be in direct reporting lines, for example, peers and more senior team members.

• Teaches and mentors others. Invests in helping others learn, understand, and acquire knowledge. Strives for transparency and shares knowledge and expertise.

BUSINESS & INDUSTRY ACUMEN

• Excellent analytical and problem-solving skills. Assesses the risks of complex multi-location operations and provides options to manage these risks. Frames and explains complex topics that allow business leaders to understand the risks and tradeoffs to make effective decisions.

• Excellent English oral and written communication skills, including the ability to communicate complex legal and business issues in terms that are understandable to non-lawyers.

• Outstanding attention to detail while meeting multiple, tight deadlines.

• Ability to independently handle complex matters with minimal supervision, and understand which issues to elevate to senior management and appropriate timing for doing so.

• Demonstrated business acumen reflected in delivery of legal support and guidance that highlights an understanding of the business issues and / or complexities.

• Excellent verbal and written communication; ability to articulate important legal concerns/principles to non-legal business units.

• Proactively keeps apprised of trends and developments in the industry.

• Ability to understand, synthesize and manage conflicts of law and regulatory policy across multiple global locations.

• Superior integrity and work ethic

• Highly ethical cultural intelligence and sensitivity

• Willingness to travel approximately 20% of the time.

RESULTS ORIENTATION

• Demonstrates curiosity and willingness to challenge self and others to learn and evolve regardless of situation or context.

• Focuses on outcomes and demonstrates ownership and accountability for results beyond individual or team.

• Demonstrates the ability to bounce back when faced with challenges and setbacks. Inspires others to stay the course by always keeping mission and purpose front and center.

Pay range: $190k-$250k

Disclaimer: This job description indicates in general terms, the type and level of work performed as well as the typical responsibilities of employees in this classification and it may be changed by management at any time. Other duties may also apply. Nothing in this job description changes the at-will employment relationship existing between the Company and its employees.