SunGard Corporate Counsel Senior - IP in Jacksonville, Florida

Corporate Counsel Senior - IP

  • Job ID #:JR41160

  • Functional Area:Legal

  • Position Type:Full-Time Regular

  • Experience Desired:At least 5 years

  • Education Desired:Juris Doctor or equivalent

  • Primary Location:US-Florida-Jacksonville 601 Riverside Ave-1199

  • Secondary Location(s):US-Pennsylvania-Collegeville 200 Campus Drive-4253

    • Travel Percentage:0.00
  • Relocation Provided:No

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Position Responsibilities\Requirements:

Job Summary:Intellectual Property Transactions/Technology Attorney with 7 to 12 years of experience with a background in financial services and/or computer software industry. The candidate will be primarily responsible for handling complex technology transactions such as licensing, outsourcing, and commercial transactions, and related intellectual property issues in connection with joint ventures, mergers and acquisitions, and other transactions. Additionally, the attorney will work with the Chief Intellectual Property Attorney and IP legal team to manage, maintain and enforce FIS’ Intellectual Property, including the trademark and patent portfolios, and handle a variety of intellectual property issues including litigation matters, particularly intellectual property infringement claims. This attorney will report to FIS’s Chief Intellectual Property Attorney and interact with the legal, business and development teams. Provides counsel to both the business and legal teams. Primary responsibility is for matters related to intellectual property transactions. In addition, other responsibilities are assisting the Chief IP Counsel in order to:

  • Assist Legal Team in contract review and analysis regarding intellectual property issues.

  • Assist in patent litigation and pre-litigation activities, including working with the Intellectual Property Counsel and outside counsel to develop strategies to defend, resolve and prevent various forms of litigation.

  • Develop and implement strategy, procedures and programs to develop and maintain the intellectual property portfolios and legal rights of the Company, with an emphasis on the patent portfolio strategy and evaluation of new inventions.

  • Manage and oversee the prosecution of patent, trademark and copyright applications; both in the US and International jurisdictions.

  • Prepares applications for patents, copyrights, and trademarks and presents applications to the U.S. Patent and Trademark Office (USPTO). Drafts, negotiates, and interprets IP licenses and contracts.

  • Evaluates the validity of competitors' patents and potential company product infringement upon valid patents of competitors.

  • Responsible for pre-patent filing review, providing legal advice to the company concerning the patent viability of its inventions and the advisability of filing patent applications covering the company's inventions.

  • Conduct administrative activities related to intellectual property records/databases and other general duties as assigned.

    REQUIREMENTS:• Requires a Juris Doctor (JD) degree.• Requires the incumbent to be admitted to practice law and a member in good standing of any State Bar.• Requires 7 to 12 years of experience in intellectual property and intellectual property transactions.• Registration to practice before the U.S. Patent and Trademark Office (USPTO) is required. Professional role. Highly-skilled with extensive proficiency. Uses wide-ranging experiences, professional concepts and enterprise objectives to resolve complex issues in creative and effective ways. Works on complex projects as a project leader or subject matter expert. May act as a team lead in coordinating the activities of other personnel.

FIS™ is the world's largest global provider dedicated to financial technology solutions. FIS empowers the financial world with software, services, consulting and outsourcing solutions focused on retail and institutional banking, payments, asset and wealth management, risk and compliance, trade enablement, transaction processing and record-keeping. FIS’ more than 53,000 worldwide employees are passionate about moving our clients’ business forward. Headquartered in Jacksonville, Florida, FIS serves more than 20,000 clients in over 130 countries, and our technology powers billions of transactions annually that move over $9 trillion around the globe. FIS is a Fortune 500 company and is a member of Standard & Poor’s 500® Index.



FIS is an equal opportunity employer. We evaluate qualified applicants without regard to race, color, religion, sex, sexual orientation, gender identity, marital status, genetic information, national origin, disability, veteran status, and other protected characteristics. The EEO is the Law poster is available

For positions located in the US, the conditions below apply.

If you are made a conditional offer of employment, you will be required to undergo a drug test and background check (including criminal record check)

ADA Disclaimer: In developing this job description care was taken to include all competencies needed to successfully perform in this position. However, for Americans with Disabilities Act (ADA) purposes, the essential functions of the job may or may not have been described for purposes of ADA reasonable accommodation. All reasonable accommodation requests will be reviewed and evaluated on a case-by-case basis.

As part of the selection process this role may require an assessment to determine suitability

Recruitment at FIS works primarily on a direct sourcing model; a relatively small portion of our hiring is through recruitment agencies. FIS does not accept resumes from recruitment agencies which are not on the preferred supplier list and is not responsible for any related fees for resumes submitted to job postings, our employees, or any other part of our company.