The Assistant General Counsel IP will be responsible for supporting the Business Unit’s Intellectual Property team.
The successful candidate will support the creation of a patent portfolio by leading preparation and prosecution of domestic and international patent applications; drafting and negotiating IP-related provisions in sales, supply, licensing, technology, joint-development, confidentiality, and other agreements; driving freedom to practice analysis, evaluating and resolving product clearance issues for product development; developing and investigating IP enforcement opportunities; resolving defensive matters; providing guidance along with training management and technical staff regarding IP protection; and support M&A due diligence activities.
Key Responsibilities
Obtain intellectual property protection for commercial differentiators and develop IP enforcement and defensive strategies;
Educate and train management, staff, and other resources;
Ensure freedom to practice and avoidance of third-party IP;
Manage outside counsel and other IP practitioners;
Perform mergers and acquisition IP due diligence; and
Draft and negotiate IP-related provision in agreements.
YOU MUST HAVE
Bachelor’s Degree in engineering or computer science & Juris Doctorate of Law including registrations to practice before a state bar and the USPTO
Minimum 6-8 years’ experience in the practice of law with a significant focus on intellectual property, patent protection, IP enforcement and new product introduction.
A combination of law firm and corporate legal department experience in these areas is an advantage.
Experience in drafting and negotiating complex commercial contracts
WE VALUE
Significant strategic patent application drafting and prosecution
Detailed understanding of IP protection for electrical and software-related inventions
Timely and consistent management of complex IP issues with limited guidance or supervision
Patent litigation experience
Ability to convey information with clarity across diverse global teams
Proven ability to solve problems with variety of variables
Intellectual capacity and high standards of excellence
Strong initiative and propensity for sound, decisive action
Experience in licensing including software
Demonstrated sense of urgency, attention to detail, and dynamic prioritization
Superior analytical skills and business acumen
Clear and effective executive communication skills, both written and oral
Excellent skills in management and problem-solving
Ability to work independently to drive key initiatives including understanding deliverables and timeframes
Additional Information
JOB ID: HRD224201
Category: Legal
Location: 855 S Mint St,Charlotte,North Carolina,28202,United States
Exempt
Honeywell is an equal opportunity employer.
Qualified applicants will be considered without regard to age, race, creed, color, national origin, ancestry, marital status, affectional or sexual orientation, gender identity or expression, disability, nationality, sex, religion, or veteran status.