This individual will be responsible for the patent portfolio and new product risk mitigation for various Business Units within Milwaukee Tool.
Duties and Responsibilities:
Work closely with in-house attorneys and agents
Provide advice to the Business Units’ engineering and marketing leadership regarding patentability and infringement risk for new product development
Evaluate, develop, and implement patent filing and searching strategies for new products
Serve as a liaison between in-house engineering and marketing teams, global subsidiaries and affiliates, and outside counsel
Counsel and coach engineering and marketing personnel regarding patent issues
Present patent risks and updates for new projects to management in a clear and concise manner, with ability to provide practical legal advice upon which effective business decisions may be made
Participate in recurring new product development meetings to stay informed on changing product design features, assist engineering teams with understanding the patent landscape, and harvest strategic inventions for patent protection
Monitor competitor portfolios to offer strategic advice to the business
Chair and prepare necessary materials for IP Review Committee to inform leadership of patent risks, opportunities, and developments
Analyze offensive and defensive infringement positions, send and respond to patent notice letters, and support IP litigation
Juris Doctorate degree
Bachelor’s degree in Engineering or educational equivalent (mechanical or electrical engineering preferred)
Registered to practice before the United States Patent & Trademark Office
Minimum 3 years experience in IP counseling, patent preparation, and prosecution (law firm or corporate legal department experience)
Strong organizational and follow through skills
Strong communication, critical thinking, and writing skills to support effective communication with all levels of marketing, engineering, and leadership within the business
Attention to technical and administrative detail
Self-motivation to immerse with the business and engineering teams to support legal needs and to quickly learn the business’ goals and objectives
Ability to develop, communicate, and execute IP tactics to support those business needs
