Senior Intellectual Property Advisor

1 month ago

Andover, Hampshire, United Kingdom oilandgas Full time
IP Counsel Opportunity

We are seeking an experienced IP Counsel to join our team in North America. As an IP Counsel, you will play a key role in supporting our patent portfolio management and strategy for our Industrial Automation business.

Key Responsibilities
  • Manage the invention disclosure submission and evaluation processes
  • Coordinate the filing of new patent and design applications
  • Manage international secondary application filings
  • Support other IP group teams on various issues, including Open Source Software, Standard Essential Patents, IP Training, and IP Competitive Analysis
  • Review official actions and proposed responses based on feedback from the business
  • Direct outside counsel, particularly in respect of externalization of the foregoing
  • Develop and provide IP Training modules for the business on all forms of intellectual property, including recognition of protectable subject-matter and submission of ideas
  • Assist in defining intellectual property strategy in support of different lines of business related to Industrial Automation software and hardware
  • Lead innovation identification sessions within selected projects
  • Participate in innovation review meetings to ensure protection of business initiatives in line with intellectual property strategy
  • Perform competitive analysis operations pursuant to business needs
  • Provide 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 and 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
  • Commercial and strategic acumen
Benefits
  • Schneider Electric offers a robust benefits package to support our employees, including flexible work arrangements, paid family leave, 401(k)+ match, and more.

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