This is an extremely important position for these businesses and requires an individual with strong patent & IP legal skills and executive presence, combined with a hands-on work ethic and the ability to work seamlessly in a cross-functional, multinational structure. These Johnson Controls businesses are both highly innovative and require significant investment in new product development. Patent procurement, enforcement and monetization are all a critical part of the business strategy. The commercial environment is highly competitive both in technology and patent enforcement.
The successful candidate will be an experienced patent practitioner with sophisticated judgement on patent matters and an ability to think strategically, manage through ambiguity and develop pragmatic solutions. He or she will be a team player who will build strong professional relationships the engineering team, global product management, senior executives and colleagues at all levels across the organization.
How you will do it
- Develop a comprehensive patent procurement, enforcement and risk mitigation strategy
- Manage and perform day-to-day patent activities for the business unit including patent application preparation and prosecution, oversight of patent portfolios and product and technology analyses related to ownership, infringement and validity of patents; manage outside counsel helping with these activities
- Patent searching, clearance and counselling as an integrated part of the product development process. Using the in-house searching capability and working very closely with the engineering teams and global business leaders
- Patent mining
- Lead the monetization of patent assets to generate value
- Partner with the litigation team to manage offensive and defensive patent litigation
- Conduct patent landscaping analysis for new business areas
- Draft and negotiate IP agreements, and coordinate with managers and legal transaction teams related to IP issues.
- Manage external legal services and associated budget
- M&A: Conduct IP due diligence and draft and negotiate IP aspects of definitive agreements
What we look for
- Between 10 and 15 years of relevant intellectual property legal experience
- JD, along with bachelor’s degree in Engineering or other scientific subject
- Admission to practice before the US Patent and Trademark Office and at least one state bar.
- Patent attorney with significant practice experiencebefore the USPTO and with PCT and Non-US filings.
- Strong experience drafting and negotiating IP and commercial technology agreements
- Experience working in a multinational, publicly traded company environment is preferred
- Experience managing patent litigation
- Experience with monetization and licensing
- Engineering work experience is beneficial