Intellectual Property Counsel 

What We Do:

Uptake is a Chicago-based predictive analytics SaaS platform provider that empowers major industry leaders to optimize performance, reduce asset failures and enhance safety. At Uptake, we combine our strengths—machine learning, analytics, data visualization and software development—with the expertise of our industrial partners. The result is enormous savings in development time and resources for Uptake’s partners and a proven industrial grade software platform that delivers value to partners and their end customers.

What You’ll Do:

As IP Counsel, you will develop the overall strategic vision for Uptake's growing IP portfolio. You will advise management regarding all aspects of Uptake's IP strategy. For example, you will have ownership of the patent prosecution process, including reviewing patent applications, coordinating the patent harvesting process, assessing the patentability of proposed inventions, evaluating whether Uptake's IP strategy sufficiently protects its business, and drafting or reviewing freedom to operate opinions.

You will develop proactive and defensive patent strategies, help train developers and engineers regarding Uptake's patent process, and advise relevant stakeholders on IP developments in the industry. You will also assist with IP transactional issues, including licensing, contracting, and regulatory compliance.

The IP Counsel will assist with patent litigation as needed, and you will help manage outside counsel who assist in IP-related matters. 

Required Qualifications:

• JD from top law school with outstanding academic credentials
• Admitted to practice in Illinois, or eligibility for admission as in-house counsel
• 6-8 years as a practicing lawyer with experience in more than one of the following disciplines: IP strategy, patent drafting and prosecution, patent litigation, IP transactions, and FTO analysis
• Prior in-house experience in a dynamic, forward-thinking legal department required; some law firm experience preferred
• Ability to work independently with minimal supervision in a fast-paced environment, to collaborate with others, and to be part of a team 
• Outstanding strategic and analytical abilities
• Strong negotiation, communication, and presentation skills, including experience presenting to senior management
• Entrepreneurial spirit