Digital IP Counsel

ABB LTD Raleigh , NC 27611

Posted 3 months ago

Join ABB and work in a team that is dedicated to creating a future where innovative digital technologies allow greater access to cleaner energy.

ABB (ABBN: SIX Swiss Ex) is a technology leader that is driving the digital transformation of industries. With a history of innovation spanning more than 130 years, ABB has four customer-focused, globally leading businesses: Electrification, Industrial Automation, Motion, and Robotics & Discrete Automation, supported by the ABB Ability digital platform. ABB's Power Grids business will be divested to Hitachi in 2020. ABB operates in more than 100 countries with about 147,000 employees.

ABB is seeking a Digital IP Counsel, to develop, align and execute an IP strategy while partnering with the Business in concert with the relevant technology roadmap on ABB Group, Divisions, and BLs as well as across the different organizational layers. This position will lead and ensure cultural change from local to global approach and mindset for IP activities and operations. The individual will have the opportunity to build-up an IP portfolio as a strategic, value-based asset and be a valued business partner to the assigned client base.

This is remote/work from home opportunity and the position can be based anywhere.

Your responsibilities

  • Lead and execute the intellectual property (IP) legal strategy for assigned Digital, Software, and Artificial Intelligence (AI) endeavors across the assigned client Business base. Architect a portfolio development and management practice for building and operating a strong, valued IP portfolio.

  • Align activities and execution with ABB Group Strategy and verticals, work within the directed scope of activities assigned by management, and ensure that all Business Lines associated with Digital activity are properly aligned and their portfolios consistent with, business, technology, and geographic needs.

  • Develop an IP strategy that is based on mid and long term business trends and provides ABB with current and future competitive advantages, covering comprehensively the developing business operations (staying ahead of the curve).

  • Provide education, webinars, and other communications to further educate the technology community on practices associated with a world class IP operating system.

  • Provide, early and often, pro-active IP counseling with peers, colleagues, and internal clients as well as transparency in activities and communication between IP and various business interfaces, while providing timely delivery of excellent work product and associated escalation of top IP issues as appropriate.

  • Improve and update IP internal processes and tools: ensure that adequate processes and tools for handling IP issues are in place for Digital based activities; create and deliver routine reporting of Digital activities as assigned; work closely with data analytics teams to deliver world class outcomes.

  • IP protection and exploitation: ensure that adequate IP protection is actively and consistently pursued, support all functions/people involved in extracting value from IP assets, including licensing, cross licensing, legal enforcements; conduct FTO, prior art searches, competitive assessments, contract negotiations, open source software engagements, invention review teams, and provide risk-mitigated legal decisions, opinion and positions timely and with full integrity.

  • IP defense and risks management: ensure that IP threats are properly evaluated and managed; coordinate, support and give guidance in identifying proper countermeasures to face and solve or mitigate risks and liabilities.

  • IP portfolio management: lead portfolio management activities in assigned areas, ensuring that IP portfolios are globally managed, strategically developed, and aligned with the business goals; support or lead teams to deliver on goals.

  • Support the CoE team for Digital Innovation and various Business Lines across multiple Businesses to account for digital transformation and IP needs, strategy and performance; be the primary POC for key issues and budgets as assigned, as well as implementation, for such matters.

Your background

  • 5 years experience required.

  • Certified professional qualifications, United States Patent and Trademark Office admitted; at least one state licensed in good standing.

  • Prior proven successes in all aspects of IP analysis, innovation development, and early risk mitigation.

  • Strong familiarity with licensing, contract negotiations, digital and software technologies, wireless and platform configurations, block chain, artificial intelligence, virtual reality.

  • Exposure to anti-counterfeiting of interest.

  • Management experience and leadership mentality with daily engagement for delivering and performing individually as well as in teams.

  • Ability to think strategically and be open-minded.

  • IP direct professional experience (drafting, prosecuting, conflicts, M&A, negotiations) in national and international environments.

  • Prior working experiences in different multicultural contexts.

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Digital IP Counsel