Description:
An Energy Management and Automation Company has a meaningful opportunity for a Sr. IP Counsel to work for a company consistently rated by Fortune as one of the “Great Places to Work”, by Forbes as “America's Best Employers for Diversity”, and by Equileap as the “World's Top 10 in Gender Equality”. In this opportunity you will help define way of working and establishing work and supporting culture.Position Summary:
As an IP Counsel located in our North America office, you will join a talented and collaborative global group of in-house lawyers and legal professionals to support patent portfolio management and strategy for Schneider Electric's Industrial Automation business
Roles & Responsibilities:
This role will focus on patent and design procurement and portfolio management, strategy and development, including:
- Managing the invention disclosure submission and evaluation processes
- Coordinating filing new patent and design applications
- Managing international secondary application filings
- Supporting other IP group teams on a variety of issues including Open Source Software, Standard Essential Patents, IP Training, and/or IP Competitive Analysis
- Reviewing official actions and proposed responses based on feedback from the business
- Directing outside counsel, particularly in respect of externalization of the foregoing
- Developing and providing IP Training modules for the business in all forms of intellectual property, including recognition of protectable subject-matter and submission of ideas
- Assisting in defining intellectual property strategy in support of different lines of business related to Industrial Automation software and hardware
- Leading innovation identification sessions within selected projects
- Participating in innovation review meetings to assure protection of business initiatives in line with intellectual property strategy
- Performing competitive analysis operations pursuant to business needs
- Providing other assistance and support to R&D, marketing, and legal department staff as requested, including on pre-litigation and litigation matters
Requirements:
- Qualified professional representative before the US Patent & Trademark Office
- University degree in electrical or computer engineering, mechanical engineering, computer science, or physics
- At least 3+ years of experience in the field of intellectual property in developing patent portfolios
- Knowledge (relative to experience) of laws and practices under US patent laws, Paris Convention, European Patent Convention and Patent Cooperation Treaty
- Fluency/proficiency in English (oral & written)
Preferred:
- At least 5+ years of experience in the field of intellectual property in patent procurement and portfolio management
- Familiarity with, knowledge of and demonstrated ability to work with technologies including computer software, computer hardware elements, IoT, data analysis, machine learning, AI, and/or embedded software/hardware systems;
- Admitted to practice law in at least one state having a Schneider Electric R&D center presence
- Professional experience in both private practice and in-house multinational teams, businesses, and environments
- Demonstrated ability to develop and implement standards ensuring procurement of patents and designs of the highest quality and business relevance
- Demonstrated ability to direct and manage external counsel
- Working knowledge of a language other than English, particularly French, German or Chinese
Skills & Abilities:
- Strong organizational, analytical and project management skills with an attention to detail;
- Ability to identify issues and instances of when/how to escalate issues as appropriate;
- Ability to work independently and collaboratively with cross-functional teams;
- Strong analytic skills to identify risk, evaluate associated risk mitigation actions and clearly summarize complex topics and needs;
- Ability to define creative and flexible solutions to support global projects within a global team and balance risk, resources, and compliance;
- Ability to prioritize tasks, deadlines, and risks;
- Strong teamwork and interpersonal skills to support an inclusive and global team; and
- Commercial and strategic acumen
