Director, Assistant General Counsel - Intellectual Property

Cboe Global Markets•Chicago, IL

9d•Hybrid

About The Position

Cboe is seeking a Director, Assistant General Counsel – Intellectual Property to provide legal support globally to all levels of the organization regarding intellectual property. This position will also provide legal support with respect to emerging risks, as well as other regulatory frameworks applicable to global exchange operators. In fulfilling these duties, this position will also collaborate with and manage outside counsel and other experts as necessary. Further, depending on the division’s needs and the individual’s interests, the position may also provide the opportunity to gain experience in other legal areas relating to Cboe’s diverse businesses. As an operator of exchanges and other trading venues, Cboe operates in a highly regulated environment and compliance by Cboe with its legal and regulatory obligations is paramount in the conduct of its business. This position is in Chicago, Illinois.

Requirements

Minimum of 8 years of experience as a registered attorney, of which at least 5 years must be experience as a patent attorney supporting technology-driven businesses, with a focus on software and other technology.
Sophisticated knowledge of U.S. intellectual property laws related to patents, copyrights, trademarks, and trade secrets (EU is a plus).
Ability to work both independently and cooperatively in group situations; offer assistance and support to co-workers; balance team and individual responsibilities; exhibit objectivity and openness to others' views; give and welcome feedback.
Proven analytical and problem-solving skills.
Ability to organize and prioritize work assignments; strong time management experience and skills; and ability to complete multiple tasks simultaneously with accuracy and quality, to adjust to changes in priorities and situations, and to meet deadlines.
Member in good standing of at least one state bar association.
Bachelor’s Degree and Juris Doctorate.
Licensed to practice law.
USPTO registration.
Computer proficiency in Microsoft Office Suite applications including Word, PowerPoint, Excel, and Outlook, as well as document management and other office technologies.
Candidates must be legally authorized to work in the United States without the need for employer sponsorship now or in the future.

Nice To Haves

Experience with intellectual property, particularly patents, related to and previous employment with highly regulated institutions, including financial institutions, is desirable.
Ability to effectively communicate both orally and in writing and in interactions with internal and external contacts.
Ability to create and execute detailed project plans and effectively collaborate with stakeholders.
Prior employment in financial services, experience with IP litigation and administrative proceedings, and familiarity with international intellectual property laws.
Strong attention to detail and the ability to articulate complex concepts with the level of detail that is necessary for various regulatory and other written communications.

Responsibilities

Perform a combination of the following functions. Particular day-to-day functions may vary among certain of the following functions depending upon priorities at that time.
Protect, manage, and leverage Cboe intellectual property (IP) with patents, trademarks, copyrights, and other means through the development and execution of comprehensive IP strategies aligned with Cboe business objectives, priorities, and risk tolerance while supporting innovation in a highly regulated environment, by among other things: Managing IP legal work within the Legal Division.
Preparing and prosecuting patent applications and related filings before the U.S. Patent and Trademark Office (USPTO).
Preparing and prosecuting trademark applications and related filings before the USPTO.
Assessing patent/trademark registrability and freedom to operate.
Managing external counsel on IP matters, including U.S. and foreign prosecution and IP litigation and disputes.
Reviewing IP contract provisions.
Conducting IP due diligence.
Developing and implementing IP-related policies and processes.
Providing IP counsel to senior management and key stakeholders.
Providing education to stakeholders regarding IP.
Stay current on IP developments.
Partner across the organization to support the IP program and maintain effective working relationships with key stakeholders involved in IP-related matters.
Support Cboe’s IP initiatives, including protection of inventions, marketing review, competitive landscape analysis, and response to fraudulent or impermissible use of Cboe IP.
Assist with management of outside counsel and collaborate with Cboe stakeholders on IP protection and portfolio management (e.g., invention harvesting, prosecution and maintenance, portfolio optimization, risk assessment, and regulatory reporting).
Advise on IP issues related to financial technology, software, AI/ML, data analytics, cloud computing, cybersecurity, and digital platforms.
Maintain fluency with domestic and international IP laws and regulations impacting Cboe as a financial institution.
As needed, provide business and risk partners strategic legal counsel that not only meets current requirements, but anticipates changes (to law and/or technology) to better maintain business flexibility and efficiency.
Provide counsel on Cboe responses to litigation, administrative actions, regulatory, and other inquiries concerning IP, technology, branding, and related matters.
Use AI, as appropriate, to improve efficiency while maintaining high-quality IP legal work.
Provide legal support in respect of other areas of emerging risk, such as sanctions and trade controls, anti-money laundering rules and regulations, compliance with the Foreign Corrupt Practices Act, and other similar areas requiring coordinated and company-wide compliance programs.
Assist with various legal projects across the Legal Division and perform other duties as assigned.

Benefits

Fair and competitive salary and incentive compensation packages with an upside for overachievement
Generous paid time off, including vacation, personal days, sick days and annual community service days
Health, dental and vision benefits, including access to telemedicine and mental health services
2:1 401(k) match, up to 8% match immediately upon hire
Discounted Employee Stock Purchase Plan
Tax Savings Accounts for health, dependent and transportation
Employee referral bonus program
Volunteer opportunities to help you give back to your communities
Complimentary lunch, snacks and coffee in any Cboe office
Paid Tuition assistance and education opportunities
Generous charitable giving company match
Paid parental leave and fertility benefits
On-site gyms and discounts to other fitness centers