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Counsel, Patent and IP Prosecution



United States
Posted on Thursday, September 7, 2023

Job Responsibilities:

  • Responsible for assisting in the strategy, development, enforcement and ongoing management of Company’s IP portfolio, with focus on patents but also including trademarks, trade secrets and copyrights.

  • Provide day-to-day strategic and legal support and proactive guidance to stakeholders across the company and business divisions relating to IP

  • Assist with the preparation and filing of U.S. and international patent applications in various technology areas.

  • Assist in preparation and filing of U.S. and international trademark filings, including conducting trademark searches.

  • Assist in anti-piracy strategy and initiatives.

  • Manage all aspects of patent prosecution with outside counsel, analyze invention disclosures, conduct patent searches, maintain Pearson’s patent portfolio and support decisions on maintenance, including strategically.

  • Develop and conduct patent training and idea harvesting sessions.

  • Support Pearson’s patent pipeline, inventor and innovation programs and other intellectual property initiatives.

  • Provide legal advice and support on IP-related issues, including free-to-operate, patentability, validity, non-infringement, patent landscape analyses and searching, joint development, open-source software, data science and data mining and artificial intelligence.

  • Initiate, defend and manage post issuance proceedings.

  • Advise on IP issues and strategy and technology in connection with commercial transactions, licensing, and M&A.

  • Draft and negotiate complex technology and IP related agreements.

  • Assist in resolution of legal disputes, litigation and risks relating to intellectual property including patent litigation.

  • Maintain, track and project annual budget and expenses relating to patent activity.

  • Engage in other activities and/or special assignments as needed.

Qualifications and Skills:

  • Juris Doctor degree from a top U.S. law school with a record of strong academic performance.

  • Bachelor’s degree in computer science or engineering, advanced degree a plus

  • Admitted to practice law in at least one U.S. jurisdiction and able to qualify as authorized in house counsel as appropriate.

  • Registered to practice before the United States Patent and Trademark Office.

  • 4+ years of experience preparing and prosecuting patent applications and providing patent counseling in a law firm and/or in-house. 4+ years of trademark experience.

  • Experience drafting and negotiating complex agreements. Anti-piracy experience a plus.

  • Expertise with LLMs, NLPs, data sets, modeling, statistics, APIs and/or network architecture and infrastructure.

  • Experience in dispute resolution, including patent litigation.

  • Experience in the education, publishing and/or edtech industries preferred.

  • Excellent written, analytical and verbal communication skills, and skill in explaining complex matters.

  • Strategic vision; ability to develop and execute on an IP strategy.

  • Agility working within an international organization and with global colleagues and a strong client service approach to your work.

  • Passion for IP, OSS licensing, artificial intelligence and other technology and learning.

  • Must have very strong organizational and time management skills.

  • Must be self-disciplined and a self-starter and be able to create a structure for yourself to work within by prioritizing workload and taking ownership of completion of assigned tasks. You must work well independently and as part of a team.

  • Ability to take initiative, multi-task and maintain top quality work.

  • Desire to strive for excellence, to learn, and problem solve.

  • Ability to think critically/logically, overlay organization on complex tasks and problem solve.

  • Knowledge of U.S. and international IP laws, practices, procedures and regulations and systems, including private PAIR.

  • Experience working with IP docketing, asset management and other systems and platforms, including Lecorpio, WebTMS, etc..

  • Strong Excel and PowerPoint experience.

  • Ability to travel as needed.

What to expect from Pearson

Did you know Pearson is one of the 10 most innovative education companies of 2022?

At Pearson, we add life to a lifetime of learning so everyone can realize the life they imagine. We do this by creating vibrant and enriching learning experiences designed for real-life impact. We are on a journey to be 100 percent digital to meet the changing needs of the global population by developing a new strategy with ambitious targets. To deliver on our strategic vision, we have five business divisions that are the foundation for the long-term growth of the company: Assessment & Qualifications, Virtual Learning, English Language Learning, Workforce Skills and Higher Education. Alongside these, we have our corporate divisions: Digital & Technology, Finance, Global Corporate Marketing & Communications, Human Resources, Legal, Strategy and Direct to Consumer. Learn more at We are Pearson.

We value the power of an inclusive culture and also a strong sense of belonging. We promote a culture where differences are embraced, opportunities are accessible, consideration and respect are the norm and all individuals are supported in reaching their full potential. Through our talent, we believe that diversity, equity and inclusion make us a more innovative and vibrant place to work. People are at the center, and we are committed to building a workplace where talent can learn, grow and thrive.

Pearson is an Affirmative Action and Equal Opportunity Employer and a member of E-Verify. We want a team that represents a variety of backgrounds, perspectives and skills. The more inclusive we are, the better our work will be. All employment decisions are based on qualifications, merit and business need. All qualified applicants will receive consideration for employment without regard to race, ethnicity, color, religion, sex, sexual orientation, gender identity, gender expression, age, national origin, protected veteran status, disability status or any other group protected by law. We strive for a workforce that reflects the diversity of our communities.

To learn more about Pearson’s commitment to a diverse and inclusive workforce, navigate to: Diversity, Equity & Inclusion at Pearson.

Note that the information you provide will stay confidential and will be stored securely. It will not be seen by those involved in making decisions as part of the recruitment process.


Organization: Corporate Legal

Schedule: FULL_TIME

Req ID: 12459