Director & Chief IP Counsel
DIRECTOR & CHIEF IP COUNSEL
Overview: This is a key position implementing BISSELL's patent and intellectual property strategy requiring independent judgment, pragmatic advice, demonstrative business perspective, creative problem-solving abilities, and positive client relationships
Candidate must have a B.S. degree in engineering and an LLM or JD from an accredited law school, with at least three years of experience in design engineering and at least eight years' experience in patent and intellectual property work in private legal practice or for another corporate law department. Experience in BISSELL technology areas are highly desirable, but analogous art and durable goods experience is highly desired. Current admission or the ability to obtain admission to the Michigan Bar is required, as is registration with the U.S. Patent and Trademark Office. Strong oral, written and influencing skills are critical
This is a key position implementing BISSELL's intellectual property and patent enforcement strategy, requiring independent judgment, pragmatic advice, demonstrative business perspective, creative problem-solving abilities, and positive client relationships. BISSELL drives innovation, and the key products driving the Company's success are developed internally, or collaboratively with external partners. This position will play a central role in defining the go-forward intellectual property strategy and in developing and executing upon an aggressive growth agenda. Thus, there is a strong emphasis on strategic IP development and leadership for this position.
Duties & Responsibilities:
- Manage and develop BISSELL's intellectual property portfolio, with primary emphasis on U.S. and international utility and design patents.
- Develop both offensive and defensive strategy to ensure room to operate and build leverage against competitive challenges, implementing proactive measures and processes to achieve KPIs.
- Lead a team of IP professionals to achieve measurable goals, managing budget and workload and distribute to the best available resource.
- Review all new product initiatives to ensure clearance against outside intellectual property holdings and advise the organization with respect to risk exposure.
- Negotiate acceptable risk tolerance and drive clarity on decisions throughout the organization.
- Quarterly Patent Reviews to Senior Management. This position requires independent judgment, pragmatic advice, demonstrative business perspective, creative problem solving abilities, and positive client and associate relationships
- Build and Manage the BISSELL Intellectual Property Portfolio (Patents, Trademarks, Trade Secrets, and Copyrights)
- Manage a small in-house staff of Patent Attorneys, Patent Engineers and IP Paralegals to accomplish Corporate Goals.
- Manage the Intellectual Property Budget and work to stay within agreed upon limits. Negotiate to adjust budget needs as necessary.
- Gain consensus for patent filing priority, identify appropriate resources, and ensure high quality patent filings.
- Coordinate decision meetings for maintenance fees and annuities. o Ensure that all non-GPD product ideas are thoroughly reviewed and maintain a process to make patent searching and filing decisions.
- Some responsibility related to IP due diligence in company acquisitions and opportunistic acquisition of IP portfolios.
Coordinate Patent Risk Management Activities:
- Understand all new product initiatives and make decisions to ensure that adequate steps are being taken to control risks to an acceptable level.
- Understand in-house and outside capabilities and direct work to the most efficient use of resources.
- Thoroughly understand risk associated with new product development, ensure clarity, and track to make sure that mitigating initiatives are properly implemented.
- Maintain a system to ensure that pending competitive concerns are adequately tracked to provide an early warning system for potentially troublesome patent claims
Dispute Resolution (up to litigation):
- Manage the patent clearance process and keep track of potentially troubling claims. Implement strategies to minimize the risk. Ensure communication throughout the organization and immediately update when the risk changes.
- Determine the best way to resolve disputes short of litigation.
- Direct first-notice of competitive disputes to the appropriate in-house or outside counsel. Direct communications between BISSELL IP staff or outside counsel may be appropriate at an early stage to efficiently resolve disputes early.
- Lead and support defense activities as needed.
- Develop, build, and maintain a portfolio of patent claims against competitors. Although BISSELL's strategy is to avoid disputes and build a defensive patent portfolio, solid claims against competitors can add leverage when disputes arise for other reasons -- i.e. advertising claims, non-compete violations, etc.
- As identified and requested either by self-initiative or through requests from other areas of the organization.
- Initiate and manage improvements to IP docketing system.
- Initiate and manage improvements to the Idea Hopper process.
- Initiate and manage improvements to the Patent Marking System.
Education & Experience:
- Candidate must have a B.S. degree in engineering and an LLM or JD from an accredited law school, with at least three years of experience in design engineering and at least eight years' experience in patent and intellectual property work in private legal practice or for another corporate law department.
- Experience in BISSELL technology areas are highly desirable, but analogous art and durable goods experience is critical.
- Admission or the ability to obtain admission to the Michigan Bar is required, as is registration with the U.S. Patent and Trademark Office. Strong oral and written communication
Required Core Competencies:
- Visionary leadership
- Team leader/coach/ability to motivate.
- Global strategic thinking and implementation
- Business and financial acumen
- Change leadership/management
- Oral and written communications with impact