IP Legal Counsel

Vertiv Group•Westerville, OH

About The Position

The IP Counsel, Americas position is intended for a junior to mid-level attorney who is dedicated to protecting and enforcing the company's intellectual property portfolio across all product lines. Reporting directly to the Global Head of IP as part of the Global IP team, this role supports senior management and collaborates closely with both business and legal teams to safeguard Vertiv’s intellectual property. Key responsibilities include assisting with licensing strategies, developing IP enforcement objectives, and identifying opportunities to monetize Vertiv’s IP portfolio. The ideal candidate will have foundational experience in IP law and litigation, with a strong desire to further develop expertise in aligning IP strategy with business objectives. In this position, you will support the company’s intellectual property initiatives and provide guidance to senior leadership on legal matters. A working knowledge of patent litigation and drafting enforcement transactions is required, as is the ability to draft and review claim charts and conduct competitive analysis. Skills in risk assessment, negotiation, and teamwork are essential. Strong communication abilities and a willingness to learn are also important, as you will help implement IP policies, work with internal teams, and assist in enforcement campaigns across multiple jurisdictions.

Requirements

Law Degree from a leading law school.
Science or engineering undergraduate or graduate - degree, preferably in mechanical or electrical engineering.
Admitted to practice in at least one state and admitted to practice before the United States Patent and Trademark Office.
Minimum of two (2) years' experience as an intellectual property lawyer at a respected in-house legal department or an associate / junior partner of a respected law firm specializing in intellectual property.
Proven analytical skills and understanding of a broad range of engineering concepts, ideally including HVAC systems, power systems, liquid cooling, and computer science principles
Excellent communication skills in speaking, writing, and presenting.
Excellent organizational skills and experience working effectively with all levels of management.
Extensive experience in the practice of IP law, including patents, trademarks, copyright, and trade secret law.
Strong strategic IP protection planning and development skills.
Strong patent application preparation and prosecution skills, including international patent prosecution.
Experience drafting and negotiating IP agreements and agreements with IP terms.
Experience with freedom to use and clearance opinions.
Experience working with a team of IP attorneys and staff.
Experience with the administration of, and improvements to, IP operations, including budget management, outside counsel management, IP portfolio management and electronic billing systems.
USPTO registration or eligibility therefor
Licensed Attorney in Ohio or eligibility therefor

Responsibilities

Portfolio and Operations Management Conduct evaluations of Vertiv’s portfolio to maximize strategic opportunities through cost effective means.
Consistently review and update competitive intelligent reports and analysis.
Regularly review third party IP assets to assess their value and relevance.
Create and execute strategies to maintain, expand, and optimize IP monetization opportunities.
Enhance departmental best practices to increase cost-effectiveness and oversee outside IP counsel and vendors.
Strategic Planning Formulate and implement long-term IP strategies to support major business objectives.
Remain current with both industry and competitor developments, and technological advancements as well as legal developments to proactively refine IP approaches.
Advise senior management on strategic IP issues, including risk assessment and mitigation planning.
Negotiate and draft settlement and IP licenses and other IP-related agreements, ensuring adherence to company policies and the achievement of favorable outcomes.
Assist in the management of the Company’s global patent and trademark portfolio strategies.
Support due diligence processes and other IP considerations related to M&A activities.
Leadership and Development Work closely with the Global IP Team to meet business goals by delivering practical legal advice.
Develop and implement efficient IP processes and workflows.
Advise senior leaders with actionable, business-focused guidance to foster collaboration across the organization and with external partners.