Intellectual Property Counsel, Industrial Solutions

General Electric  Atlanta, GA

Posted: January 6, 2017 | Job Type: Full Time

Role Summary/Purpose:

The Intellectual Property (IP) Counsel will be responsible for leading the Intellectual Property Team, setting the IP strategy, and managing the complete range of IP issues for GE Industrial Solutions (IS), including all global patent, copyright, trademark, trade secret, licensing, commercial and litigation matters.

Essential Responsibilities:

As the Intellectual Property Counsel, you will:

Be responsible for negotiating/executing internal (GE-to-GE) and external IP licensing agreements

Support the development of the IP strategy of the Business in close interaction with the IS General Counsel, Engineering organization, and Business management

Establish, integrate and promote LEAN IP practices & procedures throughout IS to create, protect, administer and exploit IP rights and avoid infringement of IP rights of others

Manage IP, in a manner that is cost effective and consistent with IS’ objectives, to have an impact on the bottom-line from both a defensive and offensive perspective while simultaneously driving for increased levels of productivity via digitization and other such initiatives

Work cooperatively with GE’s Global Patent Organization (GPO) to effectively manage IS’ global patent portfolio

Work with and provide counsel to Senior Business Leaders and Business Counsels

Be able to communicate high-level and complex IP concepts to Senior Leaders

Qualifications/Requirements:

Juris Doctorate from an accredited law school

Minimum of 10 years of IP / Patent law experience

ELIGIBILITY REQUIREMENTS:

Member in good standing of the bar of any state and registered to practice before the U.S. Patent & Trademark Office

Desired Characteristics:

Undergraduate Technical Degree preferably in Electrical Engineering

Possess significant IP experience in patents, trademarks, trade secrets, copyrights, mergers and acquisitions, litigation (patents) and legal issues associated with technology transfer as well as experience in developing and supervising an IP operation

Demonstrated experience in managing and handling a wide variety of IP matters including: patent prosecution, procurement of IP rights, creating IP asset portfolios, formulating and implementing IP policies and procedures, generating licensing income, resolving infringement disputes, risk management, drafting and negotiating IP agreements and IP related terms in commercial agreements, handling IP issues in mergers, acquisitions and other complex transactions and managing IP litigation

Sound judgment in developing and implementing legal solutions

Demonstrated ability to handle multiple priorities in a time pressured environment

Demonstrated ability to develop creative process-driven solutions to IP issues

Strong oral and written communication skills

Ability to quickly identify and prioritize issues; create solutions and clearly communicate actions

Work effectively and team with all levels of management

Work closely with other counsel in addressing mixed IP / general legal and compliance issues

Strong interest in supporting a global business teaming with global GE resources

Demonstrated expert knowledge and command of US and international IP law

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