Description:

An Energy Management and Automation Company has a meaningful opportunity for an 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

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 An Energy Management and Automation Company's Energy Management business

The primary responsibility of this role will be to support US-based Energy Management business and some travel to R&D centers in the US will be required as will occasional travel outside of US for global activities

Roles & Responsibilities:

This role will focus on patent and design procurement and portfolio strategy and development, including:

Managing the invention disclosure submission and evaluation processes
Coordinating filing new patent and design applications
Managing international secondary application filings
Reviewing official actions and proposed responses based on feedback from the business
Directing outside counsel, particularly in respect of externalization of the foregoing
Training innovators 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 energy management hardware and software
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

We know skills and competencies show up in many different ways and can be based on your life experience. If you do not necessarily meet all the requirements that are listed, we still encourage you to apply for the position.

Qualifications:

Qualified professional representative before the US Patent & Trademark Office
University degree in electrical or computer engineering, mechanical engineering, computer science, or physics;
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); and
At least 3+ years' of experience in the field of intellectual property in developing patent portfolios

Skills & Abilities:

Strong organizational and project management skills with an attention to detail
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