Senior IP Counsel - Patents

Ecolab•Eagan, MN

1d•Hybrid

About The Position

Ecolab Inc. is a global leader in water, hygiene and energy technologies and services. With $16 billion in sales, Ecolab delivers comprehensive programs and services to the food, energy, healthcare, industrial and hospitality markets in more than 170 countries. This role is for an experienced Senior IP Counsel to help protect the company's patent and trade secret portfolio and advise the business on intellectual property matters related to its technologies. The position is an integral part of the Legal team.

Requirements

JD degree with strong academic performance.
Chemistry and equipment related education and/or technical experience.
Admitted to practice law and in good standing.
Registered patent attorney with the United States Patent and Trademark Office.
7+ years of experience, preferably at top law firms and/or in-house, with at least 4 years of law firm practice managing global patent prosecution and portfolio strategy.
Experience with efficiently and effectively conducting patent clearance searches and FTO analyses.
Strong knowledge of US and international patent procedures, prosecution, clearance, and enforcement.
Experience managing patent paralegals and directing foreign counsel.
Ability to form strong relationships with business leaders and communicate with them effectively.
Exemplary organizational skills and impeccable attention to detail.
Ability to proactively manage a high volume of tasks with competing deadlines through time management and establishing priorities.
Resourcefulness, sound judgment, and tact to appropriately handle requests from all levels, including senior management.

Responsibilities

Manage global patent clearance, prosecution, and enforcement activities for Ecolab’s businesses and technology areas relating to energy, digital, and controls.
Advise and consult with clients at all levels of the organization, including senior leadership, to identify and assess critical patent and trade secret legal matters, including guidance regarding protection, enforcement, and risk mitigation.
Responsible for patent related due diligence for M&A matters and post-acquisition integration activities.
Work with members of various internal and external teams on negotiations and drafting of licenses, acquisitions, and other business and settlement agreements.
Develop and provide global in-house training and education on patents, trade secrets, and intellectual property related agreements.