VP and Chief IP Counsel
EATONBeachwoodUpdate time: December 13,2021
Job Description
PRIMARY FUNCTION: Responsibilities will include advising and making recommendations to the business leadership team Senior Vice President and General Counsel, Digital, Innovation and Technology and the Executive Vice President / Chief Technology Officer (“EVP/CTO”) on legal issues pertaining to Eaton and managing a broad range of intellectual property (IP) rights activities. This includes, among other things, working with appropriate stakeholders to execute the strategy of the IP function and ensuring that: IP transactions between Eaton companies and with third parties are conducted in accordance with Eaton’s business objectives; Eaton’s IP is appropriately protected and where applicable enforced; appropriate steps are taken to avoid infringement of the IP rights of others; and IP processes are developed and deployed to support business needs. The position will be located in Cleveland, Ohio and reports directly to the Senior Vice President and General Counsel, Digital, Innovation and Technology. Primary functions will include providing guidance with regard to the patentability of invention disclosures, supervising outside counsel, preparing and negotiating intellectual property agreements, providing legal counsel on various technology transactions, 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, providing guidance for IP litigation, conducting intellectual property law training, efficiently and actively managing the IP portfolio, and successfully interacting with Eaton regional IP law groups throughout the world. ESSENTIAL REQUIREMENTS: Law degree and patent professional registration or qualification is required. Minimum of 15 years of post-qualification/registration experience with extensive experience in industrial/electrical and software practice. IP enforcement and/or licensing experience required. The proven ability to successfully direct and collaborate with dispersed global teams. Excellent communication skills and a proven ability to interface with all levels of management is a must. The successful candidate must have a high degree of initiative, creativity and an impressive professional presence. Must be a team player, with the ability to develop and maintain close working relationships with clients, Law colleagues, and colleagues in other corporate functions. The successful candidate must be capable of establishing and achieving stretch goals, must think and act strategically, must get excellent results, and must adhere to the highest standards of business ethics. The successful candidate will have: the ability and experience to effectively analyze Eaton’s IP position in a diverse range of situations, to provide practical and business-focused recommendations and advice to the EVP/CTO, SVP/Innovation and Law Department colleagues, and to successfully negotiate those positions with third parties; a strong practical knowledge relating to IP technology transactions, a substantial understanding of the IP laws and systems, particularly in relation to patents and software; and a commercial outlook, viewing IP as a commercial tool to be used as part of a broader strategy. A willingness to travel to visit other Eaton locations is essential. SUMMARY OF ESSENTIAL FUNCTIONS: The successful candidate will be expected to: Oversee and direct Eaton’s IP function from Eaton’s global headquarters, including: Working with and providing advice and recommendations to leadership and other appropriate stakeholders to execute on the strategy of the IP portfolio. Providing 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, know-how and trade secrets, and rights under contracts and government licenses. Working cooperatively with a globally-dispersed team of IP support staff in the US, EMEA, and APAC, including IP attorneys, paralegals, and an administrative support team. Structure, draft, negotiate and analyze agreements for the acquisition of global and domestic technology products and services, including cloud services, intellectual property licenses, hardware purchases and related support services. Review, interpret and negotiate agreements with suppliers, advising clients and partners on rights and responsibilities related to those agreements, including compliance with Eaton policies and regulatory requirements. Provide legal research and legal counseling on technology, intellectual property and contractual issues, as needed. Designing and implementing procedures and processes, to support the IP strategy created by the Chief Legal Officer, EVP/CTO and SVP/General Counsel, to ensure the efficient handling of all IP-related processes, including setting and measuring key performance indicators, and ensuring that domestic and relevant foreign IP laws are monitored and that processes and practices are promptly adapted to reflect important legal changes. Working closely with other Eaton senior corporate and operations management to ensure that IP strategy meets the businesses’ needs including, among others, the Eaton corporate functions and the Eaton operating businesses. Selecting, directing and assess outside counsel that provide IP and technology transaction services to the businesses. Provide negotiation and drafting support of outbound contracts and license, SaaS and professional services transactions to the business as required. Provide legal support for various go to market endeavors, such as web selling and SaaS within the business. Ensuring that, in combination with your own efforts, the following functions are successfully provided for the Eaton businesses Contract Advice: Providing advice and assistance on the negotiation on the IP aspects for a wide variety of contracts, including: confidentiality agreements, purchase or sales agreements, joint R&D agreements, contract manufacturing or subcontracting design and development agreements, licensing agreements, and business acquisitions. Patent Prosecution: Interfacing with engineers to identify inventions. Establishing appropriate legal ownership over all IP under relevant local intellectual property laws and registration systems. Managing and assessing IP disclosures. Helping to decide whether or not to seek patent protection. Drafting and prosecuting patent applications, including the management and supervision of this activity by outside counsel. Protecting all IP against unauthorized appropriation or imitation under such intellectual property laws and registration systems as well as under unfair competition legislation or other enforceable laws, or by contract Patent/Registered Right Searching: Searching patent information databases for novelty and infringement assessment purposes in connection with new inventions and development projects and in relation to carrying out IP landscape searches. This will include the use of the well-known commercially available databases, and may include contracting with outside searchers. Infringement Opinions: Providing infringement opinions, either internally or with the use of outside counsel. Freedom to Operate Strategy: Advising upon appropriate strategies for infringement avoidance, providing freedom to operate opinions, assisting in the development of “engineer around options,” initiating nullity and invalidity proceedings, and working with Eaton businesses, and where appropriate, instructing outside counsel in connection with these actions. IP Education: Preparing and delivering IP education in the form of seminars or presentations for engineers, sales and marketing managers and senior business leaders. Developing IP Strategies: Different Eaton business units operate in very different markets and in different ways. It is therefore necessary to devise and implement differing IP protection strategies for different units. Portfolio Management and Review: Regularly reviewing Eaton Intelligent Power Ltd.’s patent portfolio for the purpose of retaining only those that are of commercial value. Assist and Support Acquisitions and Divestitures: Provide IP support for business acquisitions and divestitures, including assisting with due diligence activities. Knowledge of Supported Businesses: The successful candidate will be expected to ensure that close relationships are built and maintained with and between the businesses, which will include a strong knowledge of products and activities of Eaton’s businesses. Qualifications Qualifications: Undergraduate degree in science or engineering. Juris doctorate degree or an MBA in conjunction with a Master’s in Intellectual Property Law. US or European patent attorney/agent registration and/or qualification. Minimum of 15 years post registration/qualification intellectual property law experience. At least 5 years in multinational industrial practice. Law firm and corporate experience preferred. Software legal counseling and technology transactions required. Experience as a leader or manager of people required. Outstanding communications skills, both written and oral. Proactive thinker, able to anticipate new issues and opportunities on both a strategic and tactical level. Strong work ethic with high standards and the ability to work independently as well as in a collaborative team. Competence in project management. High energy and enthusiasm to pro-actively seek opportunities for continuous improvement. As a contractor with the Federal government, Eaton is subject to the Executive Order mandating COVID-19 vaccination. As permitted by applicable law, the candidate(s) hired under this posting must provide evidence of full vaccination as defined by CDC guidelines, or request a medical, pregnancy or religious accommodation exempting them from the requirement. Vaccination status will not be verified until after an offer of employment is provided, and candidates may also request a medical, pregnancy or religious accommodation at that time. Eaton also 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 412-893-3600 or send an email to: AccommodationsForApplying@Eaton.com What you will get from us Eaton’s mission is to improve the quality of life and the environment through the use of power management technologies and services. We provide sustainable solutions that help our customers effectively manage electrical, hydraulic and mechanical power – more safely, more efficiently and more reliably. Making what matters work at Eaton takes the passion of every employee around the world. We create an environment where creativity, invention and discovery become reality, each day. It’s where bold, bright professionals like you can reach your full potential—and where you can help us reach ours. Eaton’s 2020 revenues were $17.9 billion, and we sell products to customers in more than 175 countries. We have approximately 85,000 employees. We make work exciting, engaging and meaningful for our employees through our dedication to tackling some of the toughest power management challenges on the planet and by never losing sight of what matters. Our culture is built on a strong commitment to practicing our core values and supporting our employees with the tools they need to succeed. We pledge to always foster a diverse and inclusive environment, including inclusion resource groups that bring together employees who share a common purpose, interest or background. In the past year, our company has received top employment recognition by the Human Rights Campaign and almost fifty percent of our Board of Directors represented diverse groups. When we embrace the different ideas, perspectives and backgrounds that make each of us unique, we — as individuals and as a company — are stronger. We have demonstrated our passion for sustainability with the recent announcement of cutting carbon emissions from the company’s operations by at least 50 percent by 2030. We are ethical, passionate, accountable, efficient, transparent and committed to learning. We are confident we can deliver on our promise to improve the quality of life and the environment because of the attributes that our employees embody. 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. Job: Legal Region: North America – US/Puerto Rico Organization: Corporate Sector Job Level: Executive Schedule: Full-time Is remote work (i.e. working from home or another Eaton facility) allowed for this position?: No Does this position offer relocation?: Relocation from within hiring country only Travel: Yes, 10 % of the Time

Get email alerts for the latest"VP and Chief IP Counsel jobs in Beachwood"