Director, Assistant General Counsel - Intellectual Property

Duties and Responsibilities

• Protect, manage, and leverage Cboe intellectual property (IP) with patents, trademarks, copyrights, and other means through the development and execution of comprehensive IP strategies aligned with Cboe business objectives, priorities, and risk tolerance while supporting innovation in a highly regulated environment, by among other things:
• Managing IP legal work within the Legal Division.
• Preparing and prosecuting patent applications and related filings before the U.S. Patent and Trademark Office (USPTO).
• Preparing and prosecuting trademark applications and related filings before the USPTO.
• Assessing patent/trademark registrability and freedom to operate.
• Managing external counsel on IP matters, including U.S. and foreign prosecution and IP litigation and disputes.
• Reviewing IP contract provisions.
• Conducting IP due diligence.
• Developing and implementing IP-related policies and processes.
• Providing IP counsel to senior management and key stakeholders.
• Providing education to stakeholders regarding IP.
• Staying current on IP developments.
• Partner across the organization to support the IP program and maintain effective working relationships with key stakeholders involved in IP-related matters.
• Support Cboe’s IP initiatives, including protection of inventions, marketing review, competitive landscape analysis, and response to fraudulent or impermissible use of Cboe IP.
• Aid in managing outside counsel and collaborate with Cboe stakeholders on IP protection and portfolio management (e.g., invention harvesting, prosecution and maintenance, portfolio optimization, risk assessment, and regulatory reporting).
• Provide IP counsel on financial technology, software, AI/ML, data analytics, cloud computing, cybersecurity, and digital platforms.
• Maintain fluency with domestic and international IP laws and regulations impacting Cboe as a financial institution.
• Advise on IP issues related to financial technology, software, AI/ML, data analytics, cloud computing, cybersecurity, and digital platforms.
• Maintain fluency with domestic and international IP laws and regulations impacting Cboe as a financial institution.
• Provide counsel on Cboe responses to litigation, administrative actions, regulatory, and other inquiries concerning IP, technology, branding, and related matters.
• Use AI, as appropriate, to improve efficiency while maintaining high-quality IP legal work.
• Provide legal support in respect of other areas of emerging risk, such as sanctions and trade controls, anti-money laundering rules and regulations, compliance with the Foreign Corrupt Practices Act, and other similar areas requiring coordinated and company-wide compliance programs.
• Aid in various legal projects across the Legal Division and perform other duties as assigned.

Experience

• Minimum of 8 years of experience as a registered attorney, of which at least 5 years must be experience as a patent attorney supporting technology-driven businesses, with a focus on software and other technology.

Knowledge, Skills and Abilities

• Ability to effectively communicate both orally and in writing and in interactions with internal and external contacts.
• Sophisticated knowledge of U.S. intellectual property laws related to patents, copyrights, trademarks, and trade secrets (EU is a plus).
• Ability to create and execute detailed project plans and effectively collaborate with stakeholders.
• Prior employment in financial services, experience with IP litigation and administrative proceedings, and familiarity with international intellectual property laws.
• Strong attention to detail and the ability to articulate complex concepts with the level of detail that is necessary for various regulatory and other written communications.
• Ability to work both independently and cooperatively in group situations; offer assistance and support to co-workers; balance team and individual responsibilities; exhibit objectivity and openness to others' views; give and welcome feedback.
• Prominent analytical and problem-solving skills.
• Ability to organize and prioritize work assignments; strong time management experience and skills; and ability to complete multiple tasks simultaneously with accuracy and quality, to adjust to changes in priorities and situations, and to meet deadlines.
• Member in good standing of at least one state bar association.

Education/License(s)

• Bachelor’s Degree and Juris Doctorate.
• Licensed to practice law.
• USPTO registration.
• Computer proficiency in Microsoft Office Suite applications including Word, PowerPoint, Excel, and Outlook, as well as document management and other office technologies.