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Legal Director, Intellectual Property

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Legal
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WD30063098028 Requisition #
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What you will do

Based in Cranston, RI / Westford MA this is a global role which will report to the Chief Intellectual Property for Johnson Controls as part of the legal team.  The individual will develop and implement strategies to protect and enforce the company's patent & other IP rights for the Johnson Controls Fire Suppression, Chillers and Industrial Refrigeration businesses.

 

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 experience before 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  
 
Success attributes include the strong interpersonal skills and agility needed as a leader in a multinational conglomerate:
  • Influence executive decision-makers in strategic, portfolio-wide decisions with strong communication, presentation and interpersonal skills
  • Work effectively with individual inventors and researchers to develop solid understanding of inventions and further identify inventions and developments eligible for patent protections and licensing/exploitation
  • Collaborate across multiple functions, organizations and with a diverse group of colleagues from around the world 
  • React quickly, positively, professionally and pragmatically to a fast-moving and challenging commercial environment
  • Focus on legal spending as an investment of shareholder cash and constantly strive to maximize return on that investment
  • Ability to use personal judgment and initiative to develop effective and constructive solutions for challenges and obstacles.
  • The successful candidate will be a team player with a positive 'can do’ attitude but also be able to work autonomously.
  • Ability to work ethically and with full integrity when making time sensitive or difficult decisions.

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