IP Counsel - Trademark Portfolios and Contracts
Raleigh, North Carolina, USA
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Join ABB and work in a team that is dedicated to creating a future where innovative digital technologies allow greater access to cleaner energy.
ABB is seeking an Intellectual Property (IP) Counsel - Trademark Portfolios and Contracts for its Raleigh, North Carolina location. This role is responsible to develop, align, and execute an IP strategy while partnered with the Business in concert with the relevant technology roadmap on ABB Group, Divisions, and Business Lines (BLs) as well as across the different organizational layers, including CHTET (technology company of ABB) and Technology Ventures. Lead and ensure cultural change from local to global approach and mindset for IP activities and operations. Develop, Lead, and Counsel on key technology, intra-company, extra-company, and start-up technology venture IP activity including contracts, licensing, monetization and partnering. Build-up an IP portfolio as a strategic, value-based asset and be a valued business partner to the assigned client base.
This is remote/work from home opportunity and the position can be based anywhere.
- Lead and execute the intellectual property (IP) legal strategy for assigned Business Lines (BLs), R&D, and innovation projects including but not limited to trademarks, URL, domain names, image rights, copyright, unfair competition, trade secrets, trade dress and various other IP activities involving the creation and management of a high-value branded portfolio, and as may be assigned across the Business base.
- Architect a portfolio development and management practice for Business-focused trademarks and product marks, building and operating a strong, valued IP portfolio and a set of formalized processes making for efficient and effective contracts, term templates, creative agreements, rights challenges, licensing and monetization, web presence, etc.
- Align activities and execution with ABB Group Strategy and verticals, work within the directed scope of activities assigned by management, and ensure that all Business Lines associated with the assigned activity areas are properly aligned and their portfolios, processes and standards are consistent with, business-, technology- and geographic needs.
- Develop an IP strategy that is based on mid and long-term business trends and provides ABB with current and future competitive advantages, covering comprehensively the developing business operations (be ahead of time) as well as developing trends in shared technology development, utilization and business practices, globally.
- Lead trademark for Business-led products and related portfolios while ensuring achievement of strategic goals and BL-specified budgets, timelines and technology portfolios. Support and lead IP contract negotiations, agreement development, and technology-centric partnerships as may be assigned from time to time. Educate BLs and technology teams in IP Education and develop successful IP teams across functions within the designated BU(s). Lead and manage the BL’s efforts in IP licenses, relations and agreements with others, third party relations and inquiries, publications, as well as develop strategic pathways for future growth and opportunity aligned with the business objectives; provide education, webinars, and other communications to further educate the technology community on practices associated with a world class IP operating system all the while communicating extensively and transparently to the client base.
- Provide, early and often, pro-active IP counseling with peers, colleagues and internal clients as well as transparency in activities and communication between IP and various business interfaces, while providing timely delivery of excellent work product and associated escalation of top IP issues as appropriate.
- Improve and update IP internal processes and tools: ensure that adequate processes and tools for handling IP issues are in place for contracts, management of rights, rights documents, trademark, copyright and related activities; create and deliver routine reporting of these activities as assigned; work closely with data analytics teams and colleagues to deliver world class outcomes.
- Ensure that appropriate and adequate IP protection is actively and consistently pursued, support all functions/people involved in extracting value from IP assets, including legal enforcements; conduct appropriate searches, rights assessments, competitive assessments, contract negotiations, open source software engagements, invention review teams, and provide risk-mitigated legal decisions, opinion and positions timely and with full integrity.
- Ensure that IP threats are properly evaluated and managed, terms are effectively updated and reflect appropriate risk appetites, and all deals/contracts/relationships are handled with appropriate speed, depth and detail; coordinate, support and give guidance in identifying proper countermeasures to face and solve or mitigate risks and liabilities.
- Lead portfolio management of assigned Innovation/venture activities and maintain a business operation effect to workstream, ensuring that IP portfolios are globally managed, strategically developed, and aligned with the business goals; support or lead teams to deliver on goals.
- Support various CoE teams, Lead attorneys, and various Business Lines to; be the primary POC for key issues and budgets as assigned, as well as implementation, for such matters; support all assigned litigation and licensing support activities, globally.
- Juris Doctor degree and minimum 3 years of experience required.
- Ability to think strategically and be open-minded.
- Certified professional qualifications, USPTO admitted; at least one state licensed in good standing.
- Prior proven successes in all aspects of IP analysis, innovation development, and early risk mitigation.
- Strong familiarity with licensing, contract negotiations, digital and software technologies, wireless and platform configurations, blockchain, artificial intelligence, virtual reality, etc.
- Experience in contract and trademark successes, solid understanding of contract management, negotiations and world class processes associated with legal function activities.
- Technology areas of focus should include the technical and R&D activities of ABB globally.
- Leadership mentality with daily engagement for delivering and performing individually as well as in teams.
- Prefer IP direct professional experience (drafting, prosecuting, conflicts, M&A, negotiations) in national and international environments, management experience, working experiences in different multicultural, contexts.
- Fluency in English required; additional language preferences include: German.
More about us
Bring your very own sense of pride and purpose as you help us drive forward the Fourth Industrial Revolution – creating a sustainable future for our planet, and your career. Join ABB and harness the power of our diverse global network, as you collaborate with and learn from our world-class teams. Above all, challenge yourself every day. Let’s write the future, together.
Equal Employment Opportunity and Affirmative Action at ABB
ABB is an Equal Employment Opportunity (EEO) and Affirmative Action Employer encouraging diversity in the workplace.
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