Director and Sr. Counsel- Intellectual Property

Discover Financial Services

The Position:

The Director and Senior Counsel- IP will serve as the subject matter expert on intellectual property for the enterprise and will be responsible for advising internal business partners and legal colleagues to ensure protection of the company’s brand and intellectual property assets and reduce the risk of infringing other’s intellectual property. Reporting into the Deputy General Counsel for Direct Banking, the incumbent will lead a team of 1 in support of these matters.

Responsibilities:
 Provide counsel to business clients and colleagues across the organization on trademark,
copyright, right of publicity, trade secret and patent law
 Oversee the company’s global trademark, patent and domain name portfolios and manage
prosecution of trademarks and patents
 Manage intellectual property paralegal
 Partner with colleagues in litigation to handle intellectual property claims and litigation
 Manage office actions and UDRP proceedings
 Draft and negotiate intellectual property and marketing provisions in contracts and releases
 Provide actionable legal advice on advertising and brand matters, including, sponsorships, ad
agency relationships, content agreements, software licensing, Screen Actors Guild issues and
brand governance
 Advise on sweepstakes and contests
 Provide intellectual property training to business clients and legal colleagues
 Create guidelines and other tools to enhance efficient handling of intellectual property matters
 Partner with colleagues to design a framework for a robust patent program
 Review and advise on company policies
 Ensure proactive management and disciplined use of outside counsel and other external resources
 Manage global intellectual property budget
 Develop strong relationships with law firms selected to provide services
 Review marketing and other materials to ensure protection of intellectual property assets and noninfringement of other’s intellectual property
 Develop strategies to reduce risk of infringement claims and litigation, including patent claims
from non-practicing entities
Qualifications:
 8+ years of trademark, copyright and patent experience
 Juris Doctor from an accredited law school
 License to practice law in Illinois or eligible for admission in Illinois
 Financial Services experience preferred
 Deep experience in advertising and marketing law, social media and technology issues
 Business-oriented professional with strong analytic skills and the ability to suggest practical and
innovative solutions for legal issues in support of business initiatives and objectives
 Excellent interpersonal skills and the ability to influence others and build and foster internal and
external relationships
 Ability to communicate effectively both verbally and in writing with all levels of the organization
including senior management
 Experience driving, prioritizing, and effectively managing cross-functional initiatives
 A versatile and innovative pro-active thought leader, with strong judgment, initiative and
empathy

To apply for this job email your details to miriamlopezguerrero@discover.com