- Job Title: IP Counsel
Job Location: Shanghai, China
Position Summary:
As an IP Counsel located in our Shanghai office, you will join a talented and collaborative global group of in-house lawyers and legal professionals to support patent portfolio management and strategy for Schneider Electric's Energy Management business. This role will report to a Senior IP Counsel in China.
Roles & Responsibilities:
This role will focus on patent and design procurement and portfolio strategy and development, including:
• Managing the invention disclosure submission and evaluation processes;
• Coordinating filing new patent and design applications;
• Managing international secondary application filings;
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• Coordinating oppositions to patents and designs;
• Reviewing official actions and proposed responses based on feedback from the business;
• Directing outside counsel, particularly in respect of externalization of the foregoing;
• Training innovators in all forms of intellectual property, including recognition of protectable subject-matter and submission of ideas;
• Assisting in defining intellectual property strategy in support of different lines of business related to energy management offers, products, hardware and software;
• Leading innovation identification sessions within selected projects;
• Participating in innovation review meetings to assure protection of business initiatives in line with intellectual property strategy;
• Performing competitive analysis operations pursuant to business needs; and
• Providing other assistance and support to R&D, marketing, and legal department staff as requested, including on pre-litigation and litigation matters.
The primary responsibility of this role will be to support China-based Energy Management business and some travel to R&D centers in the China will be required as will occasional travel outside of China for global activities.
资格
- Requirements :
• Qualified, or part-qualified, professional representative before the China Intellectual Property Office (CNIPA);
• University degree in electrical engineering, software engineering, mechanical engineering, computer science, or physics;
• Knowledge (relative to experience) of laws and practices under Chinese patent laws, US patent laws, European Patent Convention, Paris Convention and Patent Cooperation Treaty;
• Fluency/proficiency in English (oral & written); and
• At least three years' experience in the field of intellectual property in developing patent portfolios;
Preferred :
• Admitted to practice law in China;
• Professional experience in both private practice and in-house multinational environments;
• Demonstrated ability to develop and implement standards ensuring procurement of patents and designs of the highest quality and business relevance;
• Demonstrated ability to direct and manage external counsel;
• Five or more years' experience in the field of intellectual property in patent procurement and portfolio management; and
• Working knowledge of a language other than English, particularly French.
Skills & Abilities
• Strong organizational and project management skills with attention to detail;
• Ability to work independently and collaboratively with cross-functional teams;
• Strong analytic skills to identify risk, evaluate associated risk mitigation actions and clearly summarize complex topics and needs;
• Ability to define creative and flexible solutions to support global projects within a global team and balance risk, resources, and compliance;
• Ability to prioritize tasks, deadlines, and risks;
• Strong teamwork and interpersonal skills to support an inclusive and global team; and
• Commercial and strategic acumen.
时间表: 全职
请求编号: 009GLV