Sr. IP Counsel - Portfolio Innovations & Licensing

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 Senior Intellectual Property (IP) Counsel - Portfolio Innovations & Licensing.

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 Business Lines (BLs), R&D, and innovation projects including but not limited to licensing, IP portfolio development and management, relationships and activities of new innovations, as may be assigned across the Business base.

  • Architect a portfolio development and management practice for building and operating a strong, valued IP portfolio and a set of formalized processes making for efficient and effective contracts, term templates, creative agreements, partnerships, licensing and monetization, web presence and venture relationships.

  • 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 the assigned activity areas are properly aligned and their portfolios, processes and standards are 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 (be ahead of time) as well as developing trends in shared technology development, utilization and business practices, globally.

  • Provide education, webinars, and other communications to further educate the technology community on practices associated with a world class IP operating system all the while communicating extensively and transparently to the client base.

  • 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 Innovation/Licensing/Monetization activities; create and deliver routine reporting of these activities as assigned; work closely with data analytics teams and colleagues to deliver world class outcomes.

  • Ensure that appropriate and 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.

  • Ensure that IP threats are properly evaluated and managed, terms are effectively updated and reflect appropriate risk appetites, and all deals/contracts/relationships are handled with appropriate speed, depth and detail; coordinate, support and give guidance in identifying proper countermeasures to face and solve or mitigate risks and liabilities.

  • Lead portfolio management of assigned Innovation/venture activities and maintain a business operation effect to workstream, ensuring that IP portfolios are globally managed, strategically developed, and aligned with the business goals; support or lead teams to deliver on goals.

  • Support various CoE teams, Lead attorneys, and various Business Lines to; be the primary POC for key issues and budgets as assigned, as well as implementation, for such matters; support all assigned litigation and licensing support activities, globally.

Your background

  • Juris Doctor degree and minimum 10 years of experience required.

  • Ability to think strategically and be open-minded.

  • 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, blockchain, artificial intelligence, virtual reality, etc.

  • Extensive, proven, validated Licensing and Monetization, Licensing negotiations and Litigation support capabilities.

  • Extensive complex contract, venture and M&A prior experiences and successes; expertise in contract management, negotiations and world class processes associated with Innovation and Venture activities.

  • Expertise in managing projects of a cross-functional nature, involving multi-jurisdictional issues in the high-tech field.

  • Prior management of attorneys in an EU country setting highly desired.

  • Technology areas of strength should include the technical and R&D activities of ABB globally.

  • Leadership mentality with daily engagement for delivering and performing individually as well as in teams.

  • IP direct professional experience (drafting, prosecuting, conflicts, M&A, negotiations) in national and international environments, management experience, working experiences in different multicultural, contexts.

  • Fluency in English required; additional language preferences include: German.

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