About the Role
The selected candidate will be responsible for leading Iron Mountain’s Global Intellectual Property (“IP”) and Technology team of attorneys. This includes drafting, negotiating, interpreting and advising on intellectual property development and commercialization, strategic partnerships and other third party agreements for our Digital Business Unit with a focus on software licensing arrangements and cloud-based solutions. This also includes managing Iron Mountain's global IP portfolio and IP strategy, and counseling clients on various IP matters involving copyrights, patents, trademarks, and trade secrets, as well as related topics such as artificial intelligence and machine learning.
Responsibilities
- Efficiently review, draft and negotiate strategically important software licensing, SaaS, PaaS and cloud services agreements
- Negotiate partnership agreements, including reseller, referral, co-marketing, co-sell, collaboration, API, OEMs and integration/ISVs, joint development, and channel partnerships, including GTM, VAR, SI/GSIs and MSPs and other service partners
- Advise business, engineering, product, and innovation teams on IP issues from early stage product development to commercialization and launch
- Guide IP protection strategy, IP litigation strategy and IP policy, focusing on product development, software integration and licensing, marketing, open source, trade secrets, patents, trademarks and copyright; educate and train internal teams on same
- Develop commercial terms and templates as new technologies and services are launched; ensure existing templates are routinely updated
- Understand and implement company approach to open source agreements; educate and train internal product development teams on same
- Understand and implement company approach to cloud architecture, enterprise platforms, software integration and AI/ML
- Knowledge of Iron Mountain’s services and the applicable legal issues
- Understand and apply standard and fallback positions in customer, partner and vendor agreements with a focus on applying creative solutions to meet business needs
- Succinctly explain and train internal legal and commercial teams on IP concepts, AI/ML, OSS, third party software connectors and hosted software
- Engage and manage external counsel on various IP matters, including maintaining matter budget
Qualifications
- A Juris Doctor degree from an accredited US law school
- A member of the bar in good standing in at least one US state
- At least 10 years of IP and technology experience, preferably in-house at a technology company, or from a law firm’s IP, technology transactions, or corporate department
Required Skills
- Nuanced understanding of global IP concepts, including AI/ML with a focus on US IP law
- Demonstrated expertise managing IP portfolios, including trademarks, patents, trade secrets and copyrights
- Significant experience drafting and negotiating software and related technology agreements, including complex client and vendor deals, combined with a strong knowledge of contract law and IP law
- Significant experience drafting and negotiating different partnership agreements, including reseller, referral, co-marketing, co-sell, collaboration, API, OEMs and integration/ISVs, joint development, and channel partnerships, including GTM, VAR, SI/GSIs and MSPs and other service partners
- Experience leading efforts in drafting, maintaining and training others on technology-specific contract templates (across client, vendor and partner agreements) and ancillary legal strategic materials (such as playbooks, alternative language guides and go-to-market materials) for new and updated product and service offerings
- Experience advising and working with software engineers on issues such as software integration and patentability of inventions
- Demonstrated ability to lead and drive matters to completion, both individually and on behalf of the team
- Proven ability to independently manage numerous deals and initiatives on tight deadlines and the ability to adapt to shifting priorities with flexibility and a pragmatic approach
- Willingness to work across regions and time zones on an as-needed basis, including managing and collaborating with attorneys in Europe and Asia
- Self-motivated, intellectually curious and a willingness to engage in new challenges and initiatives
- Thrives in a fast-past environment and enjoys working collaboratively with a variety of internal stakeholders
Business Expertise
This role requires demonstrated expertise in balancing legal positions and business needs, preferably in an IP-related law firm position or in-house position.
Leadership
This role directly manages a team of three IP & Technology attorneys and requires a proven track record leading high-performing teams, as well as positioning the team to successfully collaborate with other cross-functional teams, such as Iron Mountain’s Digital Business Unit, Innovation, Marketing, Information Security and Privacy teams.
Problem Solving
This role requires complex judgments, in-depth analysis, interpretive thinking and the ability to independently develop innovative solutions to legal and business issues.
Nature of Impact
This role has a critical impact on the Digital Business Unit by influencing decisions, strategy and customer acceptance through advice.
Area of Impact
This role directly impacts the Digital Business Unit’s and Company’s growth.
Interpersonal Skills
This role requires highly developed communication skills to negotiate complicated issues and to advise and partner with various levels internally and externally.
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