IP Counsel

Avery Dennison • Mentor, OH

13h • $130,000 - $148,000 • Onsite

About The Position

This role is primarily on-site in Mentor, OH and requires candidates to work fully on-site. Relocation or remote work may be considered for qualified non-local candidates.

The scope and responsibilities of the position include providing global intellectual property (“IP”) services to Avery Dennison, including IP strategy, domestic and international IP procurement, enforcement, and clearance, business counseling, and transactional support. The position reports to the Senior IP Counsel, Materials Group and works closely with the company’s technology and innovation leadership teams, as well as Regional Directors of R&D, Marketing, and Procurement. This hybrid position will be based in Mentor, Ohio, USA
To be successful in your role of IP Counsel, we need you to deliver on these responsibilities:
● Deliver highly skilled patent procurement services. Oversee and handle the drafting and filing patent applications (domestic, foreign and PCT applications), liaising with inventors, internal IP lawyers, agents, staff, and foreign and domestic outside counsel to obtain the information needed to prepare and successfully prosecute patent applications.
● Support global IP strategy that targets growth in key market segments and accelerates new product innovations in each key market around the world.
● Provide a full spectrum of intellectual property legal services including: client counseling; technology development and licensing contracts; trade secret protection, and patent and trademark protection, surveillance, enforcement, licensing, and litigation.
● Conduct patent novelty, validity and right to market studies, patent and information searches, and analyze and summarize search results.
● Provide strategic guidance as a business partner to R&D, Marketing, and Procurement by integrating legal advice with critical business strategies for product development, joint development efforts, and licensing matters.
● Train research and development and commercial personnel on IP best practices.
● Provide IP related advice for M&A assessments and negotiations, joint ventures, and start-up investments.
● Strong collaboration skills to engage and partner with colleagues in the global law department and global client teams.

Requirements

• Demonstrated strength at collaboration in matrix organizations, especially in a global organization and across functions.
• Superior understanding of, and ability to take and manage, risk.
• Strong business acumen, and ability to connect the law and legal strategies to business goals in a way that guides clients to successful outcomes.
• Demonstrated ability to lead.
• A technical degree is required, preferably in Chemistry, Chemical Engineering, or Materials Science or Engineering, particularly polymer chemistry.
• A law degree with excellent credentials, registration with the USPTO, and a member of the Bar in good standing is also required.
• 7+ years of patent law experience (at least 3 of those years must have been practicing in-house), including strong business counseling and strategy, transactions, patent drafting and prosecution, freedom to operate opinions, and litigation.
• Experienced with various types of transactions (M&A, JV, licensing, JDA, partnering agreements, negotiation experience with universities).
• Proven ability to deal effectively with complex legal issues that have both legal and business ramifications.
• Strong communication and interpersonal skills, with demonstrated experience of collaboration and successfully engaging with global teams.
• Demonstrated ability to lead and build relationships at a distance.
• Demonstrated excellence in client counseling.
• Highly experienced in technology relevant to Avery Dennison’s products, particularly polymers and adhesives.

Nice To Haves

• A strong working knowledge of and experience with PCT, European patent practice, and China patent practice is highly desirable.
• Familiarity with technologies relating to Avery Dennison’s products and markets is strongly preferred.
• Litigation experience is a significant plus.
• Experience with other IP such as trademarks and copyrights is useful.

Responsibilities

• Deliver highly skilled patent procurement services. Oversee and handle the drafting and filing patent applications (domestic, foreign and PCT applications), liaising with inventors, internal IP lawyers, agents, staff, and foreign and domestic outside counsel to obtain the information needed to prepare and successfully prosecute patent applications.
• Support global IP strategy that targets growth in key market segments and accelerates new product innovations in each key market around the world.
• Provide a full spectrum of intellectual property legal services including: client counseling; technology development and licensing contracts; trade secret protection, and patent and trademark protection, surveillance, enforcement, licensing, and litigation.
• Conduct patent novelty, validity and right to market studies, patent and information searches, and analyze and summarize search results.
• Provide strategic guidance as a business partner to R&D, Marketing, and Procurement by integrating legal advice with critical business strategies for product development, joint development efforts, and licensing matters.
• Train research and development and commercial personnel on IP best practices.
• Provide IP related advice for M&A assessments and negotiations, joint ventures, and start-up investments.
• Strong collaboration skills to engage and partner with colleagues in the global law department and global client teams.

What This Job Offers

• Job Type: Full-time
• Career Level: Mid Level
• Education Level: Ph.D. or professional degree