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Job Details

Chief IP Legal Counsel

Company name
Schneider Electric

Location
Lake Forest, CA

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Profile

Schneider Electric™

creates connected technologies that reshape industries, transform cities and enrich lives.

Our 144,000 employees thrive in more than 100 countries. From the simplest of switches to complex operational systems, our technology, software and services improve the way our customers manage and automate their operations.

Help us deliver solutions that ensure Life Is On everywhere, for everyone and at every moment:

https://youtu.be/NlLJMv1Y7Hk

Great people make Schneider Electric a great company.

What do you get to do in this position?

The

candidate will have responsibility of addressing all the IP and trademark needs

of the business including: Drafting, negotiating, interpreting and advising the

business on IP related agreements, such as non-disclosure agreements and

license agreements, and IP provisions in commercial

agreements. Evaluating inventions to determine patentability and,

drafting, filing and prosecuting patent applications before the USPTO and

foreign counterparts. Advising and counselling the business on various IP

matters involving copyrights, patents, trademarks, and trade secrets. Managing

outside counsel; Work will be undertaken on the above on a global basis, with

input from local counsel as needed.

Key Accountabilities:

Discuss inventions and processes with inventors or

manufacturers and ascertain whether they're likely to succeed in being granted

patents;

Analyze scientific or technical documents, including

previously granted patents, to assess whether an invention is new and

innovative;

Partner with company leadership to develop business strategy

based on IP landscapes and competitive IP assessments

·

Provides counsel, direction, policy and procedures for

identifying commercially significant IP developments and for cost effectively

protecting them

·

Will have global responsibility and extensive interaction

with the General Counsel, Corporate Development and Business Development teams

as well Software R&D organization, in developing and implementing Aveva’s

product development, pipeline growth and long-term commercialization programs

·

Assists in the selection of new in-house IP counsel of strong

competence and character;

collaborates with in-house and outside counsel in the early analysis of

defensive IP litigation matters and disputes to establish a strategy for a

timely and cost-effective resolution

·

Write detailed descriptions of inventions in precise legal

terms (patent drafts);

Suggest modifications or extensions to the definition of the

invention;

Apply for patents from the relevant Patent Office

·

Prepare responses to reports from patent examiners;

Ensure application and renewal deadlines are met;

Work with solicitors and barristers to defend or enforce

patents;

Conduct litigation in proceedings if required

·

Advise overseas attorneys on applications for foreign patent

applications, if required;

Instruct on whether business activities will infringe someone

else's patent rights;

Deal with assignments of patent when a patent is sold or

transferred;

Keep up to date with legal developments in the intellectual

property field;

Advise on other intellectual property rights, e.g. designs or

trademarks;

Tutor and mentor junior patent attorney.

Handle due diligence, contract negotiation and integration

for IP issues in M&A deals.

Essential Competencies, Knowledge and

Experience:

Must have an in-depth understanding of how an in-house legal

department operates & a passion for understanding Aveva’s businesses &

facilitating business results.

Must be able to identify & analyze critical business

issues & apply legal expertise to deliver solutions.

Must be confident with good interpersonal skills,

commercially minded, highly organized & able to work effectively in teams.

Meticulous attention to detail with strong analytical skills.

Independence

Ability to explain complex information clearly and concisely.

Good communication skills.

Sound scientific and technical knowledge.

Qualifications

This job might be for

you if:

Open minded and flexible in thought and tactics.

Resilient, resourceful, optimistic and energetic.

Able to deal with complexity.

Cultural interest and sensitivity.

Uses rigorous logic and methods to solve problems with

effective solutions.

Widely trusted.

Deals with concepts and complexity comfortably.

Analyses both success and failure for clues to improvement.

Creates a climate where people want to do their best and

creates strong morale and spirit in their team, sharing wins and successes.

Can negotiate skilfully in tough situations with both

internal and external groups.

A minimum of 8

10 years of experience with a

combination of practicing in a law firm and within a legal department of a

Software Company

·

Demonstrated business acumen, strong analytical skills, and

the ability to grasp important business issues and legal issues facing the

Company

·

Approaches IP with a strategic mindset by anticipating future

business, competitive and legal risks and looking for creative solutions and

opportunities

·

Ability to work across functions – excellent interpersonal

and communication skills, both written and verbal. Capable of quickly

establishing credibility.

Travel to support the business will be required on an ad hoc

basis.

We seek out and reward people for being straightforward, open, passionate, effective and challenging the status quo. We want our employees to reflect the diversity of the communities in which we operate.

We welcome people as they are, creating an inclusive culture where all forms of diversity are seen as a real value for the company.

We’re looking for people with a passion for success — on the job and beyond.

See what our people have to say about working for Schneider Electric:

https://youtu.be/6D2Av1uUrzY

Let us learn about you! Apply today.

You must submit an online application to be considered for any position with us. This position will be posted until filled.

It is the policy of Schneider Electric to provide equal employment and advancement opportunities in the areas of recruiting, hiring, training, transferring, and promoting all qualified individuals regardless of race, religion, color, gender, disability, national origin, ancestry, age, military status, sexual orientation, marital status, or any other legally protected characteristic or conduct.

Concerning agencies:

Schneider Electric does not accept unsolicited resumes and will not be responsible for fees related to such.

Schneider Electric is an Equal Opportunity Employer.

Minorities/Women/Veterans/Disabled

Primary Location

US-California-Lake Forest

Schedule

Full-time

Unposting Date

Ongoing

Company info

Schneider Electric
Website : http://www.schneider-electric.us/en/

Company Profile
From 1836 to today, Schneider Electric has transformed itself into the global specialist in energy management. Starting from its roots in the iron and steel industry, heavy machinery, and ship building, it moved into electricity and automation management. After 170 years of history, Schneider Electric has become today the solution provider that will help you make the most of your energy. Discover its transformation below.

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