Description:

Purpose of The Job
The Senior Intellectual Property (IP) Counsel will have front-line accountability to advise and guide the businesses of An American Company across a full spectrum of IP matters. This position provides an opportunity to work closely with key organizational leaders, furthering the enterprise's objectives by providing sound legal advice and analysis that strikes an appropriate risk/reward balance.

Reports to: Director, Intellectual Property

Span of Control: No direct reports

Job Responsibilities:
Build holistic IP portfolios that deliver sustainable competitive advantage consistent with business priorities.

Define and execute robust and business-centered IP capture and exploitation strategies.
Utilize patent landscapes and competitive intelligence to deliver actionable insights on project direction to business and innovation teams.
Supervise outside counsel in patent preparation and prosecution, agreement drafting, freedom-to-operate, opinion, enforcement, and opposition work.
Capture and secure trade secret technologies for continued business advantage.
Coach business and innovation partners to identify and exploit IP opportunities.

Engage as an active member of a team committed to delivering world-class intellectual property legal services to An American Company.

Forge counseling relationships across all functions of the enterprise to maximize the impact of IP in the organization's success.
Work independently yet coordinate with the IP team to advance an enterprise-wide IP strategy.
Partner with the legal team to deliver seamless and effective legal support across the enterprise.

Advise on IP implications in enterprise agreements and transactions.

Structure and negotiate IP-impacting transactions, including acquisitions, divestitures, licenses, strategic alliances, and joint development relationships.
Educate innovation teams on managing IP and confidentiality rights and obligations.

Support IP enforcement and defensive activities related to our patents, trademarks and key technologies.

Lead IP infringement analyses and assist in enforcement and defensive activities.
Analyze competitor patent activity and advise on the impact to the business.

Job Requirements:
Minimum Qualifications:

8+ years of broad IP experience, including extensive experience in building and managing IP portfolios, drafting and prosecuting US and foreign patent applications, opinion work, and counseling.
JD Degree required with good standing and eligibility to practice in one state, preferably Ohio.
Must be a registered patent attorney with the US Patent & Trademark Office (USPTO).
Track record of success in professional activities.

Preferred Experience:

Bachelor's Degree in Materials Science or Chemistry.
IP counseling for a building materials or manufacturing company.
IP litigation experience.

Knowledge, Skills & Abilities:

Entrepreneurial spirit with strong client-counseling and problem-solving capabilities.
Highly self-motivated with the ability to proactively organize and manage a heavy workload.
Excellent communication, advocacy, and analytical skills with ability to apply complex information in providing legal guidance and recommendations that shape business solutions at all levels of the company.
Strong relationship-building and interpersonal skills with desire to function as part of a matrixed organization with a diverse team of personnel from a variety of cultures, locations, and backgrounds.
Proven leadership record with the ability to promote the interests of the IP function.