Senior Counsel – Intellectual Property and Licensing

2 Months ago • 10 Years + • Legal

Job Summary

Job Description

The Senior Counsel – Intellectual Property and Licensing will manage Scientific Games' global IP portfolio, advising on all aspects of IP matters across multiple jurisdictions. Responsibilities include developing and executing IP strategy, advising executives and teams on IP risks and opportunities, managing patent and trademark portfolios, monitoring and enforcing IP rights, negotiating licensing agreements, and collaborating on litigation strategy. This role also includes supervising a senior trademark legal resource and managing the IP budget.
Must have:
  • Juris Doctorate from an accredited law school
  • 10+ years relevant experience
  • Expertise in all aspects of IP matters
  • Patent, trademark, copyright, trade secret knowledge
  • Excellent writing and negotiation skills
  • IP portfolio management
  • Licensing agreement negotiation
  • IP litigation strategy
Good to have:
  • Software development experience
  • Multi-tenant platform and licensing experience
  • Payment processing technology experience
  • Patent bar admission

Job Details

Scientific Games:

Scientific Games is the global leader in lottery games, sports betting and technology, and the partner of choice for government lotteries. From cutting-edge backend systems to exciting entertainment experiences and trailblazing retail and digital solutions, we elevate play every day. We push game designs to the next level and are pioneers in data analytics and iLottery. Built on a foundation of trusted partnerships, Scientific Games combines relentless innovation, legendary performance, and unwavering security to responsibly propel the global lottery industry ever forward.

Position Summary

Job Description

This position will be responsible for the management of the Intellectual Property (IP) portfolio and a broad scope of intellectual property (IP) related activities in those countries in which Scientific Games operates, including licensing, product development, patent and trademark portfolio management, trade secret management, copyright, interfacing with and advising Scientific Games’ personnel and management, and supervision of outside IP counsel. The position requires the ability to spot and analyse legal issues, present positive, creative solutions, and advise management of risks, as well as the ability to motivate and work well with the other members of the Legal Department involved in these subject matter areas. This position will advise on legal matters in the intellectual property area with appropriate input from other departments, including but not limited to the filing, prosecution, licensing, and enforcement of IP rights.  This position also supervises a senior trademark (non-attorney) legal resource.

Job Duties

  • Develop and execute the global IP strategy to align with business goals and preserve IP rights across multiple jurisdictions.
  • Provide legal advice on IP matters to senior executives, business units and R&D teams and evaluate and mitigate potential IP risks and opportunities.
  • Advise Digital Lottery team with regard to IP-related issues in product development, licensing and risk management.
  • Conduct harvesting sessions to identify protectable technologies.
  • Manage the patent and trademark portfolio, including evaluating registrability, conducting patent and trademark searches, filing applications and monitoring registrations, maintenance and renewals of trademarks and service marks. across multiple jurisdictions, and working with outside counsel to draft and prosecute patent applications, monitor patent expiration dates and required maintenance fees.
  • Develop strategies to monitor and enforce IP rights.
  • Monitor for trademark infringement and where instructed by the senior executives initiate enforcement actions when necessary.
  • Negotiate and draft intellectual property licensing agreements for inbound and outbound property transfers.
  • Advise on IP considerations in commercial contracts, including joint development agreements. Collaborate with cross-functional teams.
  • Manage and collaborate on IP litigation strategy and management.
  • IP budget management.
  • Employee management.

Required Qualifications:

Education:

  • Juris Doctorate from an accredited law school.
  • Current member in good standing, or registered in-house counsel, with the bar of at least one U.S. state required.

Required Experience:

  • At least ten years of relevant experience at a national law firm, in-house at a comparable company, or some combination thereof.
  •  Expertise in providing advice and counsel on all aspects of intellectual property matters.
  • Training and mentoring employees on law and policies.
  • Stay updated on IP laws and regulations.
  • Deep understanding of patent law, trademark law, copyright law, and trade secret protection.

Knowledge, Skills & Abilities:

  • Excellent writing and negotiation skills are essential.
  • Excellent communication skills.       
  • Team player and contributor.
  • Ability to work effectively with cross-functional teams and foster good business relationships (internally and externally).
  • Demonstrates good judgment and a good work ethic.
  • Works independently and takes initiative.
  • Management of staff and budget issues.
  • Ability to manage priorities.
  • Management of outside counsel.Strong negotiation and contract drafting skills.
  • Conduct IP due diligence.

Desired Experience:

  • Software development
  • Multi-tenant platforms and related licensing
  • Payment processing and other consumer-facing transaction technology
  • Patent bar a plus, but not necessary
  • Significant experience in managing a complex IP portfolio across various technologies.

Qualifications

Years of Related Experience

Years of experience 5 to 8 years


Physical Requirements

The physical demands described here are representative of those that must be met by an employee to successfully perform the essential functions of this job. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions. While performing the duties of this job, the employee is regularly required to sit, stand, walk, bend, use hands, operate a computer, and have specific vision abilities to include close and distance vision, and ability to adjust focus working with computer and business equipment.


Work Conditions

Scientific Games, LLC and its affiliates (collectively, “SG”) are engaged in highly regulated gaming and lottery businesses.   As a result, certain SG employees may, among other things, be required to obtain a gaming or other license(s), undergo background investigations or security checks, or meet certain standards dictated by law, regulation or contracts.   In order to ensure SG complies with its regulatory and contractual commitments, as a condition to hiring and continuing to employ its employees, SG requires all of its employees to meet those requirements that are necessary to fulfill their individual roles.  As a prerequisite to employment with SG (to the extent permitted by law), you shall be asked to consent to SG conducting a due diligence/background investigation on you.

This job description should not be interpreted as all-inclusive; it is intended to identify major responsibilities and requirements of the job. The employee in this position may be requested to perform other job-related tasks and responsibilities than those stated above. 
 

SG is an Equal Opportunity Employer and does not discriminate against applicants due to race, color, sex, age, national origin, religion, sexual orientation, gender identity, status as a veteran, and basis of disability or any other federal, state or local protected class. If you’d like more information about your equal employment opportunity rights as an applicant under the law, please click here for EEOC Poster.

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About The Company

It’s an exciting time as Light & Wonder carves its own path forward as the leading cross-platform global game company, and Scientific Games continues as the world’s leading lottery company and partner of choice for government lotteries.


These strategic business transformations have been a year in the making and would not be possible without a true collaborative effort.

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