Sr. Counsel, Intellectual Property

Eaton’s legal organization is seeking a Senior Counsel, Intellectual Property.
What you’ll do: PRIMARY FUNCTION: Responsibilities include advising and making recommendations to the Vice President and Chief Counsel, Digital, Innovation and Technology and various businesses on legal issues and managing a broad range of intellectual property (IP) rights activities.
This includes, among other things, working with appropriate stakeholders to execute the IP strategy 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; identify and counsel businesses on IP exploitation opportunities; and IP processes are developed and deployed to support business needs.
This position also includes managing IP operations, including a team of administrators/paralegals, running and driving reporting on IP metrics, and ensuring optimal performance of our IP database.
This position will be located in one of the following cities: Cleveland, OH, Pittsburgh PA, or Raleigh, NC, and reports directly to Vice President and Chief Counsel, Digital, Innovation and Technology.
SUMMARY OF ESSENTIAL FUNCTIONS: The successful candidate will be expected to: 1.
Counsel leadership and other appropriate stakeholders to execute the strategy of IP portfolios.
2.
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, know-how, and trade secrets, and rights under contracts and government licenses.
3.
Cooperatively work with a globally dispersed team of IP teammates.
4.
Support the corporate IP strategy, 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.
5.
Lead and drive an IP administrative team and manage IP assets along with streamlining an IP database, while providing transparent and consistent communication and maintenance of same.
6.
Maintaining a number of business IP portfolios, whereby making recommendations and counseling on protection and enforcement of same.
7.
Closely work with other Eaton senior corporate and operations management to ensure that businesses adhere to and meet the IP strategy.
8.
Manage inter-company agreements between the Eaton group of companies (including, e.
g.
, by way of establishing the terms of license and contract R&D transactions in written contract), and managing agreements between third parties and Eaton Intelligent Power Ltd.
9.
Providing advice and counseling on all aspects of IP.
10.
Provide and lead trainings before the Law Department and business partners.
11.
Manage and assess outside counsel that provide IP services to the businesses.
Qualifications: SPECIALIZED KNOWLEDGE: - Bachelor's degree from an accredited institution in science or engineering (electrical, computer, or mechanical preferred).
- Juris doctorate degree and/or an MBA in conjunction with a Master’s in Intellectual Property Law.
- U.
S.
patent registration and registered U.
S.
Patent Attorney in good standing.
- Minimum of 12 years post registration/qualification intellectual property law experience.
- At least 5 years in multinational industrial practice.
- Extensive, profound, and demonstrated knowledge of IP, including patents, trademarks, trade secrets, and copyrights.
- Both law firm and corporate experience preferred.
- Outstanding communications skills, both written and oral.
- Proactive communicator – knows who and when to communicate and when to escalate issues.
- Proactive thinker, able to anticipate new issues and opportunities on both a strategic and tactical level.
- Demonstrated problem solver and willingness to work within a matrixed organization, on teams, and as an individual contributor.
- 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.
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.
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.
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.
The expected annual salary range for this role is $168,750- $247, 500 a year.
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 consideration