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General Counsel
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Melinda Burrows
Deputy General Counsel
- Litigation and
Compliance, Progress
Energy Service Company
LLC

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Counsel Jobs > Assistant General Counsel, Intellectual Property Job in Illinois > Assistant General Counsel, Intellectual Property

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Assistant General Counsel, Intellectual Property

Refer job# IMGG138824

Assistant General Counsel, Intellectual Property The candidate must be member of the in-house Legal/Intellectual Property Team responsible for supporting the Company in intellectual property matters, with a primary focus on commercial intellectual property strategy development, risk mitigation, asset protection and operational excellence. Will lead the day-to-day activities of a small sub-team comprising one/more in-house IP attorneys and paralegals responsible for several core global business units. Will serve as the IP team s primary point-of-contact for legal/business colleagues in the Company s Dublin, Ohio corporate headquarters. Will guide the Company s business units in defining/executing practical patent strategies aimed at supporting long-term business objectives. Work proactively with R&D, Marketing and Product Development teams (both in the US and abroad) to identify potentially patentable products/services, taking a creative, yet practical, perspective for maximizing patent protection therefor. Stay closely aligned with key product/portfolio development initiatives to ensure that appropriate protection strategies are developed/executed. Patent Procurement. Actively contribute to the Company s in-house patent procurement team. Harvest inventions. Draft and prosecute US/PCT patent applications with efficiency and accuracy, seeking the broadest possible protection for the Company while operating within a specified budget. Review communications from foreign patent offices/counsel and provide detailed instructions to foreign counsel accordingly. Conduct patent searching, as needed, to support all prosecution activities. Involve R&D, Marketing and business leaders at all keys stages of prosecution to ensure that actions taken are consistent with the Company s business strategies/objectives. Patent Risk Identification/Mitigation. Work with R&D, Marketing and Product Development teams (both in the US and abroad) to review product offerings, conduct patent searches and provide guidance on the level of risk involved. Provide practical, business-minded options for how any such risk might be mitigated. Prepare legal opinions, as needed. Monitor patent-filing activity of key competitors and provide guidance/feedback to the Company s business units regarding patents/applications of-interest. Trademark Portfolio Management. Work with Marketing/Communications, as well as the marketing teams in the business units, to identify potential trademarks and to provide legal guidance thereon. Conduct trademark clearance searching, as needed, to ensure proposed trademarks are free-to-use and available for protection. With the support of a shared trademark paralegal, review product/service packaging, advertising materials, literature and promotional content to ensure proper trademark usage and avoidance of third-party rights. Actively participate in the IP team s operational excellence initiatives, serving as the IP team s representative on the Legal Lean team. Assist in defining/executing IP team policies, procedures and best-practices necessary for the team to conduct its patent procurement activities efficiently, accurately, on-time and with minimal waste/re-work. Actively contribute toward the IP team s goals of reducing total outside expenses while increasing the efficiency and practicality of the team s interactions with the business units. Maintain a visible presence within the business units and provide periodic intellectual property training sessions. Cultivate a strong, trusted relationship with Commercial Legal colleagues. Maintain current understanding of US law and USPTO regulations in regard to intellectual property issues affecting the Company s business strategies. Will be responsible for managing one/more IP professionals, including experienced attorneys/paralegals, as well as for supervising certain activities of shared law clerks, paralegals, intellectual property specialists and outside counsel. One or more direct reports may be remote. Experience as a mentor to others, as well as management experience, is preferred. Periodic, but regular, travel is required, which may include overseas destinations. Must be licensed in good standing to practice law in at least one US state and qualified to be admitted to the Ohio Bar. Registered in good standing to practice before the US Patent and Trademark Office. Should have BS degree in science or engineering from an accredited US university, preferably in mechanical, biomedical or chemical engineering. Should have JD degree from an accredited US law school, preferably with a concentration on intellectual property law. Must have 7-10 years of experience practicing intellectual property law, including at least 3-5 years of hands-on experience preparing/prosecuting US/PCT patent applications (and related foreign patent applications). Technical experience with medical devices/products preferred. Should have 1-3 years experience as in-house counsel ideal, with a proven track record for working independently and pro-actively to lead a practical, business-minded, holistic portfolio approach to managing complex, sophisticated IP strategies in a fast-moving business environment. Should have transactional experience with IP-related agreements and due diligence associated with business development and M&A activities.

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