Senior Counsel, Intellectual Property/Trademark/Copyright

Eaton

<p>Eaton’s legal organization is hiring a Senior Counsel, Intellectual Property/Trademark/Copyright in Beachwood, Ohio, Moon Township, Pennsylvania, and/or Raleigh, North Carolina. Relocation to one of these key markets will be offered and there will be 10% travel.</p> <b> What you’ll do:</b> <b> Job Description</b> <br> <br> Primary functions will include providing guidance with regard to the patentability of invention disclosures, preparing and prosecuting patent applications, supervising outside counsel, preparing and negotiating intellectual property agreements, conducting right-to-use studies, preparing infringement opinions, providing effective guidance with regard to IP risks, conducting intellectual property due diligence to support acquisitions and divestitures, managing a significant patent portfolio, providing guidance for IP litigation, conducting intellectual property law training, and fully participating in the Eaton Law Department’s ongoing team-based, collaborative efforts to enhance departmental performance. The Eaton Law Department is comprised of approximately 55 lawyers worldwide, provides an outstanding professional environment, and offers performance-based opportunities for career development and advancement. <br> <br> <ul> <li>Counsel leadership and stakeholders to execute the IP strategy.</li> <li>Provide advice and recommendations to leadership in managing and directing the development, enhancement, maintenance, protection, and exploitation of Eaton’s IP rights globally, including advice and recommendations pertaining to patents, trademarks, know-how, and trade secrets, and rights under contracts and government licenses.</li> <li>Handle a large volume of trademark matters, including:</li> </ul> o Develop and implement trademark strategies and policies to protect and enhance our brand identity and reputation. <br> o Conduct trademark clearance searches and provide risk assessments and recommendations for new marks and products. <br> o File and prosecute trademark applications and maintain registrations worldwide. <br> o Monitor and enforce our trademark rights against third-party infringements and oppositions. <br> o Handle trademark disputes and litigation, including negotiating settlements and drafting cease and desist letters. <br> o Manage and supervise outside counsel and vendors on trademark matters. <br> o Provide trademark education and training to internal stakeholders and employees. <br> o Conduct trademark audits and due diligence for mergers and acquisitions. <br> o Advise on trademark licensing and co-branding agreements. <br> o Stay abreast of the latest developments and trends in trademark law and practice. <br> <ul> <li>Cooperatively work with a globally dispersed team of IP teammates.</li> <li>Maintain business IP portfolios, whereby making recommendations and counseling on protection and enforcement of same.</li> <li>Provide and lead trainings before the Law Department and business partners.</li> <li>Manage and assess outside counsel that provide IP services to the businesses.</li> <li>Manage and counsel on contracts, patent prosecution/portfolio management, patent searching, infringement and freedom to operate assessments, and assist on M&amp;A activities.</li> </ul> <b><br> Qualifications:</b> <ul> <li>Minimum of 12 years’ experience practicing intellectual property law with emphasis on trademark and copyright law as well</li> <li>US patent attorney/agent registration and/or qualifications</li> <li>Juris doctorate degree from an accredited university.</li> <li>Bachelors of Science degree (preferred in electrical and/or mechanical engineering) from an accredited university</li> <li>Must be authorized to work in the US without company sponsorship</li> <li>Relocation will be offered to one of the three key markets listed for this role</li> </ul> <b><br> Skills:</b> <b> Preferred Qualifications:</b> <br> <br> <ul> <li>Law firm and corporate experience</li> <li>Litigation and / or trademark experience</li> <li>Prior engineering experience</li> </ul> <br> <b> Position Criteria:</b> <br> <br> <ul> <li>Outstanding communications skills, both written and oral</li> <li>Ability to effectively advise inventors and management personnel regarding IP risks and strategies and portfolio management.</li> </ul> <p><br> At Eaton, we strive to provide compensation and benefits that attract, engage, and retain the best talent. This includes competitive pay and a variety of benefit programs for eligible employees. The expected annual salary range for this role is $172500.03 - $253000.04 a year. This role is also eligible for a variable incentive program. Please note the salary information shown above is a general guideline only. Salaries are based upon candidate skills, experience, and qualifications, as well as market and business considerations.</p> <p></p> <p><br> We are committed to ensuring equal employment opportunities for all job applicants and employees. Employment decisions are based upon job-related reasons regardless of an applicant's race, color, religion, sex, sexual orientation, gender identity, age, national origin, disability, marital status, genetic information, protected veteran status, or any other status protected by law.</p> <p></p> <p><br> Eaton considers qualified applicants regardless of criminal histories, consistent with local laws. To request a disability-related reasonable accommodation to assist you in your job search, application or interview process, please call us at 1-800-836-6345 to discuss your specific need. Only accommodation requests will be accepted by this phone number.</p> <p></p> <p><br> We know that good benefit programs are important to employees and their families. Eaton provides various Health and Welfare benefits as well as Retirement benefits, and several programs that provide for paid and unpaid time away from work. Click here for more detail: Eaton Benefits Overview. Please note that specific programs and options available to an employee may depend on eligibility factors such as geographic location, date of hire, and the applicability of collective bargaining agreements.</p>
Posted
Practice Areas
Intellectual Property
Specialties
Copyright, Patent Prosecution, Trademark
Experience
12+ years
Type
Law Firm