Senior Counsel - Patents

British American Tobacco•Winston-Salem, NC

12d•Onsite

About The Position

Reynolds American is evolving into a global multi-category business with the purpose of creating A Better Tomorrow™ by Building a Smokeless World. This role is for a Senior Counsel, Patents in Winston-Salem, NC. The Senior Counsel, Patents will manage the Reynolds American patent portfolio and provide strategic oversight of patent litigation and enforcement activities across the Reynolds American Group of companies. The portfolio includes over 5,000 patents and pending applications, and Reynolds is actively involved in litigation and potential litigation before federal district courts, the U.S. International Trade Commission (ITC), and the Patent Trial and Appeal Board (PTAB).

Requirements

At least five years of U.S. patent prosecution or patent litigation experience, ideally both, gained in a large law firm, established boutique law firm, and/or in-house legal environment.
Broad patent law experience, including global patent prosecution and portfolio management, freedom-to-operate analysis, and intellectual property due diligence.
Demonstrated experience managing patent portfolios strategically, with consideration for enterprise risk and the impact on global patent protection.
Proven ability to advise business leaders and engage leadership in discussions on key patent issues.
Juris Doctor (JD) from an accredited law school.
Active license to practice law in at least one U.S. jurisdiction.
Undergraduate or graduate degree in engineering, science, or an equivalent field; electrical or mechanical engineering is preferred.

Nice To Haves

Patent litigation experience is preferred but not required.
Registration to practice before the USPTO is preferred but not required.

Responsibilities

Partner regularly with R&D teams to identify and capture patentable inventions and shape filing strategies.
Lead the strategic prosecution and management of the patent portfolio.
Lead freedom-to-operate reviews for new products in assigned categories, develop risk mitigation strategies, and provide business-focused advice to R&D and Regulatory teams.
Develop and execute strategies for opposition proceedings before the European Patent Office to protect innovations and secure enforceable claims.
Assess competitor products for potential infringement and identify patent enforcement opportunities.
Perform intellectual property due diligence in support of mergers and acquisitions, advising the M&A team on risks and deal-structuring strategies to mitigate those risks.
Support the Managing Counsel, Patents in managing patent litigation, Inter Partes Review proceedings, and other adversarial patent matters before the ITC, federal district courts, and the U.S. Patent and Trademark Office (USPTO), with a focus on achieving optimal outcomes.
Monitor competitor patent filings and commercial activity and develop informed patent and risk-management strategies that help position the company to capitalize on commercial opportunities.
Advise Marketing, Brand, and Commercial stakeholders based on the competitive patent landscape.
Provide clear, commercially focused advice on key patent issues to senior internal and external stakeholders, enabling business results while managing legal risk.
Build a patent-aware culture by training stakeholders on patent laws and practices that may affect business strategy, risk mitigation, and the identification and protection of intellectual property rights.
Manage outside patent counsel.
Advise on, negotiate, and draft complex intellectual property transactions and licensing agreements, balancing commercial objectives with the need for legal certainty.
Partner with Procurement and the in-house Commercial Legal team to negotiate and draft intellectual property provisions in commercial agreements.
Collaborate across Patent, Commercial, and Regulatory Legal teams to drive strategic alignment and deliver comprehensive intellectual property protection across the enterprise.
Provide additional legal support to the Managing Counsel, Patents, as requested.

Benefits

401(k) plan that offers opportunity to save on pre- and post-tax basis up to 50 percent of eligible compensation.
Company matches 100 percent of employee pre-tax/Roth (401k) contributions up to six percent.
Company contributes an additional three percent to 401(k) whether employee participates or not.
Comprehensive health- and welfare-benefits package (including medical, dental, vision, and prescription drugs).
Health Savings Account start-up contribution for employees who elect the high deductible health plan.
Flexible spending accounts for both Health Care and Dependent Care allowing employee to use pre-tax dollars to pay for qualified expenses during the calendar year.
Employee assistance program offering 8 free counselling sessions, per issue, each calendar year for employees and their dependents.
Company paid life insurance of 1x annual base pay ($50,000 minimum).
Company paid accidental death or dismemberment insurance of 2x annual base pay ($50,000 minimum).
Voluntary insurances offered at group rates: employee and dependent life insurance, AD&D insurance, critical illness, accident coverage, disability buy-up, and auto & home insurance.
Tuition reimbursement and student loan support.
Dependent Scholarship Programs.
Free confidential personal financial counselling service.
On-site health centers and 24/7 fitness centers at certain company locations.
A charitable giving matching grants program that enables employees to direct and double their donations to qualifying charitable organizations of their choice.
Health-care concierge service.
Volunteer service opportunities.
Extensive training opportunities.
Company vehicle for eligible employees.
Mobile phone allowance for eligible employees.
Paid Leave: Sick and Personal Time (exempt employees may be excused with pay for brief absences; non-exempt employees receive up to 6 days).
Vacation (levels Below Senior Director receive 15 days (pro-rated during first year of service); Senior Director and Officers receive 25 days (pro-rated during first year of service)).
Holidays (Nine company recognized and two annual personal holidays to be used at the employee’s discretion).
Paid Parental Leave + temporary reduced work schedule opportunity.
Funeral Leave.
Short-Term Disability Leave.
Long-Term Disability Leave.
Jury Duty Leave.
Military Leave.
Released Time for Children’s Education.
Community Outreach Leave.
Other paid leave benefits, as required by state or local law.