Assistant Counsel, IP

Role Purpose

Responsibility for development and support of a patent portfolio for assigned Corning businesses in order to cost-effectively and efficiently capture and protect Corning inventions.

Key Responsibilities

· Proactively oversees at least one significant patent portfolio of the relevant Corning business in accordance with strategic interests of that business‚ as well as the policies and procedures of the IP function of the Law Department

· Recommends modifications to existing patenting strategy to align with business strategy, taking into account new information with regard to strengths and weaknesses of Corning’s patents in light of the overall IP landscape and competitor positions

· Collaborates with business clients to ensure proper and comprehensive identification of Corning inventions and protection of Corning value propositions to customer

· Drafts patent applications complying with department guidelines for relevant portfolio

· Oversees outsourcing of drafting to ensure adequate protection of relevant Corning inventions, including adherence to quality, cost, and timing requirements

· Secures appropriate foreign and domestic patent protection of Corning inventions.

· Identifies opportunities to innovate and improve Law Department policies and procedures, as well as relevant IP strategies regarding patent portfolio management.

· Independently leads the Patent Review Committee process for assigned portfolio(s)

· Autonomously and proactively counsels and updates clients on matters related to

individual patents and patent portfolio

· Works with other attorneys and agents as appropriate to supplement resources for the assigned businesses and oversees projects (including review of work product),and keeps the supervisor(s) of those other attorneys and agents apprised of the status and requirements of those projects, relating to the assigned businesses

· Maintains high proficiency on current and enabling technologies related to the businesses supported as well as IP-related tools and technologies

· Works with Intellectual Asset Manager of assigned businesses to optimize efficiencies of IP capture and processes, and value of the portfolio, including implementation of patent searching, invention mining, client training, invention disclosure preparation

Experiences/Education - Required

• JD degree and member in good standing of state Bar
• Registered to practice before the USPTO
• BS and/or advanced degree in relevant technology (Materials Science, Mechanical, or Chemical Engineering, Chemistry, Physics degrees and background preferred, but other technical backgrounds and experience that correspond well with our glass materials and chemistry-related technologies will be considered)
• 3+ years of experience as a practicing patent attorney (law firm experience preferred) largely preparing and prosecuting patents, including coordination of foreign counsel

Experiences/Education - Desired

· Experience performing IP risk analyses and drafting infringement and validity opinions

· Prior technical or patent examiner experience e.g., engineering or other role in industry

· Exposure or experience drafting IP agreements and negotiating IP transactions

· Experience in litigation

· Very good written and verbal communication skills

· Ability to identify and manage risks and recommend appropriate solutions consistent

with the relevant risk tolerances of assigned business and Corning as a whole

· Ability to reduce complexity to an actionable set of facts and decision points

· Ability to work independently and manage multiple simultaneous projects effectively

· Comfortable interacting with inventors, managers, and senior leadership

· We value diversity in our team

· Good common sense and judgment, including how to prioritize diverse IP workload