Sr. IP Counsel

Schneider Electric has a meaningful opportunity for a Sr.

IP Counsel to work for a company consistently rated by Fortune as one of the "Great Places to Work", by Forbes as "America's Best Employers for Diversity", and by Equileap as the "World's Top 10 in Gender Equality".

In this opportunity you will help define way of working and establishing work and supporting culture.

Position Summary


* As an IP Counsel located in our North America office, you will join a talented and collaborative global group of in-house lawyers and legal professionals to support patent portfolio management and strategy for Schneider Electric's Industrial Automation business

Roles & Responsibilities

This role will focus on patent and design procurement and portfolio management, strategy and development, including:



* Managing the invention disclosure submission and evaluation processes


* Coordinating filing new patent and design applications


* Managing international secondary application filings


* Supporting other IP group teams on a variety of issues including Open Source Software, Standard Essential Patents, IP Training, and/or IP Competitive Analysis


* Reviewing official actions and proposed responses based on feedback from the business


* Directing outside counsel, particularly in respect of externalization of the foregoing


* Developing and providing IP Training modules for the business in all forms of intellectual property, including recognition of protectable subject-matter and submission of ideas


* Assisting in defining intellectual property strategy in support of different lines of business related to Industrial Automation software and hardware


* Leading innovation identification sessions within selected projects


* Participating in innovation review meetings to assure protection of business initiatives in line with intellectual property strategy


* Performing competitive analysis operations pursuant to business needs


* Providing other assistance and support to R&D, marketing, and legal department staff as requested, including on pre-litigation and litigation matters

The primary responsibility of this role will be to support US-based Industry Automation business and some travel to R&D centers in the US will be required as will occasional travel outside of US for global activities.

Requirements



* Qualified professional representative before the US Patent & Trademark Office


* University degree in electrical or computer engineering, mechanical engineering, computer science, or physics


* At least 3+ years of experience in the field of intellectual property in developing patent portfolios


* Knowledge (relative to experience) of laws and practices under US patent laws, Paris Convention, European Patent Convention and Patent Cooperation Treaty


* Fluency/proficiency in English (oral & written)

Preferred



* At least 5+ years of experience in the field of intellectual proper...