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Multiple locations
Fairfax, Virginia, United States of America
Minneapolis, Minnesota, United States of America
Chicago, Illinois, United States of America
JOB #R2103337

Senior Counsel, Intellectual Property and Technology

Senior Intellectual Property and Technology Counsel

ICF’s mission is: To use our ingenuity, creativity, and diverse perspectives to solve our clients’ toughest challenges.  Innovation, technology and intellectual property are critical to that mission and provide competitive advantages to ICF.

The position will report directly to the General Counsel and Executive Vice President of ICF International. The position will interact directly and frequently with business leaders throughout the company. The successful candidate will have the ability to build strong relationships, trust and share knowledge openly to effectively collaborate with business, other in-house attorneys and various stakeholders within the company, as well as external stakeholders. The position will be Senior Counsel or Assistant General Counsel level depending on experience and will be the go-to for complex IP and technology issues.

Major Duties and Responsibilities:

This position will serve as the primary legal advisor providing advice, direction and strategy on efforts designed to develop, maintain and enforce patents, copyrights, trademarks, trade secrets and other rights in software and technology for ICF’s business.  This position will also manage/support complex commercial and licensing transactions that involve ICF’s IP portfolio and will participate in strategic corporate projects related to the ICF IP portfolio, including M&A transactions.  Responsibilities include but are not limited to:

  • Managing, protecting and working with others to expand ICF’s IP portfolio, including proactively identifying and developing IP and working closely with internal clients and/or outside counsel to prepare, register or file, and pursue protection for patents, copyrights and trademarks.

  • Managing work and counseling internal business clients across a range of IP needs for the business including drafting, negotiating, interpreting and advising ICF leaders, contracts professionals and others on IP and technology-related agreements with Government and commercial clients, suppliers and others, such as software, service and licensing arrangements, with particular focus on technology and technology-enabled-services.

  • Evaluating inventions to determine viability and commercial suitability for pursuit and filing of patent applications before the USPTO and foreign counterparts.

  • Developing policies, procedures and/or processes related to the deployment of technology and technology-enabled services, and development, procurement, deployment, and protection of IP and other technology.

  • Managing or supporting commercial transaction matters, including M&A due diligence and integration activities.

  • Train internal client groups to promote awareness of IP and its implications on various functions within the organization.

  • Manage IP-related litigation matters.

  • Evaluate third party patents and technology for potential acquisition.

Experience and Education:

  • Minimum eight (8) years of relevant legal experience, with a mixture of law firm and in-house experience preferred but not required.

  • Demonstrated experience and expertise in review, drafting and negotiation of complex commercial agreements, with specific focus on technology and licensing issues, including counseling others on IP and technology matters and setting standards and creating practical guidance for business leaders, contracts professionals and others.

  • Demonstrated experience and expertise in inbound and outbound software and technology licensing and related issues, including the ability to draft, negotiate and manage a wide range of in-bound technology transactions, software and other technology development, distribution, licensing and related commercial agreements.

  • Knowledge about both US and international patent filing and prosecution required and hands-on patent prosecution experience, including drafting patent applications desired.

  • Education: JD from accredited law school of recognized standing, and individual must be admitted to practice law on behalf of ICF in an appropriate jurisdiction in the U.S.

Special Skills/Abilities:

  • Ability to approach IP creation and protection with a strategic mindset by anticipating future business, competitive and legal risks and opportunities, and offering creative solutions.

  • Demonstrated business counseling, communications, conflict management, and negotiation skills.

  • Ability to work independently and effectively manage priorities, and to demonstrate initiative to improve the delivery of services to clients.

  • Ability to facilitate and contribute to collaborative decision-making processes and work effectively on cross-functional teams.

  • Ability to manage outside counsel and other external resources for quality work product, value, and efficiency.

  • Ability to communicate effectively, both orally and in writing.

Working at ICF

Working at ICF means applying a passion for meaningful work with intellectual rigor to help solve the leading issues of our day. Smart, compassionate, innovative, committed, ICF employees tackle unprecedented challenges to benefit people, businesses, and governments around the globe. We believe in collaboration, mutual respect, open communication, and opportunity for growth. If you’re seeking to make a difference in the world, visit www.icf.com/careers to find your next career. ICF—together for tomorrow.

We can only solve the world's toughest challenges by building an inclusive workplace that allows everyone to thrive. We are an equal opportunity employer, committed to hiring regardless of any protected characteristic, such as race, ethnicity, national origin, color, sex, gender identity/expression, sexual orientation, religion, age, disability status, or military/veteran status. Together, our employees are empowered to share their expertise and collaborate with others to achieve personal and professional goals. For more information, please read our EEO & AA policy.

Reasonable Accommodations are available for disabled veterans and applicants with disabilities in all phases of the application and employment process. To request an accommodation please email icfcareercenter@icf.com and we will be happy to assist. All information you provide will be kept confidential and will be used only to the extent required to provide needed reasonable accommodations. Read more about non-discrimination:  EEO is the law and  Pay Transparency Statement.

Virginia Remote Office (VA99)

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Attorney

Who is ICF?

A global consulting services company with +7,000 people across +70 countries, but we are not your typical consultants.
LEARN MORE ABOUT ICF

Join our talent network

ICF is growing, and we add new open roles to our site regularly. If you're waiting for that perfect opportunity at ICF or want an inside look at what it's like to do world-changing work, join our talent network to stay updated.

Join our talent network

ICF is growing, and we add new open roles to our site regularly. If you're waiting for that perfect opportunity at ICF or want an inside look at what it's like to do world-changing work, join our talent network to stay updated.