Want to disrupt one of the largest industries in the world? Fortera is a Materials Technology Company headquartered in Silicon Valley that has created a new low-cost, low CO2 cement that can reduce cement emissions by 60% and global CO2 emissions by 5%. The technology is inspired by nature and directly converts CO2 into a replacement for ordinary cement, turning a problem into a product. With over ten years of testing and 100,000 hours of R&D backing the technology, Fortera is ready to grow the team and begin commercial production of this exciting new product. Be on the ground floor of a carbon-to-value movement that will impact millions for generations to come. We are looking for passionate thinkers, doers, and problem-solvers who share our vision that big challenges are big opportunities for change. Visit www.ForteraUSA.com for more information.
POSITION OVERVIEW:
Reporting to the Chief Executive officer, the General Counsel and Vice President of Intellectual Property will be a critically important and integral part member of the executive leadership team and the Board of Directors on company strategies, negotiation, and management of customer contracts, strategically protecting intellectual property, as well as ensuring legal compliance in major corporate transactions and compliance with corporate governance as we scale our pre-IPO business.
As a member of the leadership team, you will be responsible for establishing and maintaining a work environment focused on quality and that fosters learning, respect, open communication, collaboration, integration, and teamwork consistent with the Company's core values.
To ensure success you need to have sound knowledge and understanding of applicable laws and regulations, and the ability to make prudent legal decisions. Top candidates will be team players with outstanding advocacy and people skills.
RESPONSIBILITIES:
- Manage Company's corporate legal matters, including corporate governance, general securities matters, intellectual property, business development activities including licensing and acquisitions, employment laws, litigations, regulatory, compliance, commercial, and privacy.
- Advise the CEO, and senior management on strategic and complex business issues including deal structuring, licensing, intellectual property, risk management and employment law.
- Efficiently guide the company's legal activities and minimize risks for the business, developing functional plans for managing legal matters, including activities to be performed in-house or through third-party providers.
- Provide high quality, timely and practical legal advice, and guidance to identify and help resolve critical legal and business issues arising from regulatory, and research and development activities.
- Serve as Corporate Secretary in Board meetings and work with the appropriate Board committees to advise on matters of corporate governance and matters covered under the Board Committee charters.
- Shape and own intellectual property strategy; manage all patent prosecution through external patent counsel.
- Advise on regulatory requirements regarding investigational product submissions, and commercialization in the United States, Europe, and other key jurisdictions.
- Structure and negotiate business agreements, including merger/acquisition agreements, license agreements, R&D agreements, supply, manufacturing and distribution agreements, government contracts, real estate contracts, joint ventures, and strategic alliances.
- Represent Fortera in interactions with regulatory authorities and other global agencies, as appropriate, that may affect the company's development and commercialization plans.
- Act as the legal internal stakeholder for cross-functional teams, such as engineering, research and development, and plant operations.
- Lead the contracts process, working with contracts teams in drafting and negotiating contracts.
- Leads all IP related activities for Fortera including conducting preliminary patent searches, identify potentially patentable subject matter, draft, file and prosecute patent applications (in house or with outside counsel), and perform freedom to operate analysis and related client counseling for all teams.
- Assist with patent prosecution, including processing invention disclosures, determining an appropriate IP protection strategy, collaborating with outside counsel to draft and prosecute patent applications that accurately protect inventions.
- Conduct a due diligence review of all IP-related documents in each transaction in coordination with outside counsel to develop a thorough understanding of any IP risks involved and participate in periodic project discussions with key stakeholders and other legal counterparts to track due diligence findings. Team to structure and draft IP provisions in technology agreements with vendors, partners, and other third parties.
- Provide advisory and transactional support to business and technology stakeholders on IP legal risks in connection with proposed transactions, including an evaluation of potential mitigants available to lower identified IP risks.
- Review, interpret, and analyze IP agreements, advising on IP rights and responsibilities related to those agreements.
- Assist with IP litigation and copyright issues.
- Manages outside counsel to coordinate prosecution of global patent portfolios.
- Works with corporate team to provide competitive intelligence and pro-active IP strategy counseling.
- Directly advises assigned senior leadership and department teams with respect to IP-related contracts and terms, including for example, confidentiality, consulting, material transfer agreements, and research agreements and joint development agreements.
- Manages and provides counseling on trade secret and confidentiality-related matters.
- Advises regarding intellectual property aspects of licensing, M&A and commercial activities.
- Manages litigation-related activities.
MINIMUM QUALIFICATIONS:
- Juris Doctor degree from accredited law school plus bar admission in current good standing to the California Bar.
- 10+ years of relevant intellectual property experience in a law firm, corporate law department in pre-IPO stage companies.
- Significant experience handling patent prosecution.
- Substantial experience in drafting and negotiating IP provisions in various technology agreements, including IP licenses, technology transfer agreements, consulting, professional, and other complex global technology agreements.
- Substantial experience in handling IP-related due diligence and negotiating IP provisions in M&A/Strategic Investment transaction documents.
- Experience advising c-suite executives and board members on a variety of legal matters.
- Experience in successfully working with diverse, cross-functional teams in a fast-paced, start-up environment.
- Demonstrated involvement leading intellectual property decisions, commercial contracts, employment law and sales agreements.
- Excellent verbal and written communication skills.
- Proficient understanding of business sensitivities and confidentiality.
- Good business judgment, and a demonstrated ability to think strategically and creatively about proposed resolutions to legal problems and balancing of risk.
- Comfort working in a changing organization and industry and able to excel by operating from first principles with a sense of urgency while remaining flexible, open-minded, and adaptable.
- Previous experience taking a company public and in mergers and acquisitions would be an added advantage.
COMPENSATION:
The compensation package for this role includes a competitive base salary commensurate with experience of $250,000 - $300,000, well as an annual bonus and pre-IPO incentive stock options.
Fortera is proud to be an Equal Opportunity Employer. We do not discriminate on the basis of race, religion, color, national origin, sex, gender identity, gender expression, sexual orientation, age, marital status, veteran status, disability status or any other status protected by applicable law. Diverse candidates are encouraged to apply.
