Share this Job

Senior Counsel - Patents & Proc

Location: 

Shelton, CT, US

Req ID:  429
Job Type: 

We are a global team of 6,000 visionaries, doers, and makers. Our portfolio of over 25 brands touches lives in more than 50 countries. Together, we reimagine good mornings and endless summers, beauty and bonding, confidence and determination.

Position Summary:

Work within a small and agile in-house patent group focused on delivering cost-effective protection strategies for key technology in consumer products.  This position will focus on the chemical aspects of skin care products but will also work-on mechanical technology.  This position will require expertise in global patent laws and contract review/negotiation and will report to the Assistant General Counsel.

Accountabilities

 

  • Develop, manage, and implement effective growth strategies to optimize the value of assigned patent portfolios, including review of annuities for existing patent families.
  • Develop portfolio maps by conducting periodic IP and trade secret audits on assigned patent portfolios to identify potential value and implementing strategies to capture the value with strategic prosecution.
  • Implement prosecution strategies to align assigned patent portfolio with business strategy for optimal monetization.
  • Work with research and development to identify new patentable ideas, review technical functional specifications, publications, presentations, and other written materials
  • Monitor and conduct prior art searches in conjunction with patent agents and/or paralegals.
  • Prepare Freedom to Operate studies or work with outside counsel (where appropriate) to render infringement and invalidity opinions.
  • Strategically prepare and prosecute high quality patent applications for inventions to protect critical advanced innovation and support commercial products.
  • Prepare responses to US/PCT office actions, manage and provide instructions to outside foreign patent counsel for prosecution of foreign counterparts in conjunction with patent agents and paralegals.
  • Complete and maintain a list of all trade secrets for assigned technology portfolio(s), facility(ies) and develop strategy for maintaining protection for such trade secrets.
  • Participate in the preparation of and training for colleagues on legal topics including intellectual property, agreements, and related processes.
  • Manage and defend global patent post-grant proceedings including oppositions.
  • Provide, as needed, patent due diligence assistance for mergers, acquisitions and investments.
  • Responsible for intellectual property/commercial agreements related to the patent portfolio(s) and the associated facility(ies), and other corporate agreements as needed.  Agreements include, for example:
  • Post-grant proceedings related to skin care technology portfolio
  • Collaborate and work with patent group peers to harmonize portfolio processes and strategies with company-wide best practices.
  • Assist in other patent group related matters and needs

Required Education, Skills and Experience

 

  • A Juris Doctor from an accredited law school and admission to (and current good standing with) the bar of at least one state or the District of Columbia are required.
  • Admission to Practice before the USPTO, Registration Number, Required
  • Undergraduate degree in chemical engineering
  • A minimum of 4 years of experience, with at least 1 year of in-house experience preferred

Desirable Education, Skills and Experience

  • Experience with CPI and Ariba is preferred
  • Self-motivated and goal-oriented; ability to work independently with minimal supervision;
  • Strong interpersonal skills; ability to work in a highly collaborative environment and work effectively with team members and various key stakeholders;
  • Excellent organizational skills; ability to prioritize and manage multiple projects autonomously in a challenging, fast-paced environment while consistently meeting time sensitive deadlines;
  • Ability to influence without direct authority;
  • Strong communication skills, both written and verbal, ability to articulate in a clear and concise manner across various levels of the organization;
  • Proficient in Microsoft Office Suite (Word, Excel, PowerPoint)

 

 

 

 

 

 

 

#LI-LC1

*CB*

 

Edgewell is an equal opportunity employer, and we prohibit discrimination based on age, color, disability, marital or parental status, national origin, race, religion, sex, sexual orientation, gender identity, veteran status or any other legally protected status in accordance with applicable federal, state and local laws.


Nearest Major Market: Bridgeport
Nearest Secondary Market: Danbury