Cummins Inc. Corporate IP Counsel (Remote) in Indianapolis, Indiana
Corporate IP Counsel (Remote)
Cummins is looking for a talented Corporate IP Counsel to join our team specializing in providing legal advice and service on patent, copyright, and trademark matters, including evaluating patents and potential product infringement issues, preparing and overseeing outside counsel's preparation of patent applications for filing, and representing the company in matters relating to intellectual property that include strategic alliances, joint ventures, development and licensing, R&D and technology transfer, and mergers and acquisitions.
The Cummins Legal function provides a full range of legal services in support of Cummins Inc. and its consolidated businesses. Our United States staff is located in Columbus and Indianapolis, IN. We also have international legal offices located in the United Kingdom, India, Australia, Brazil, China and Mexico and Africa. Through these various offices, we can support our businesses throughout the world.
In this role, you will make an impact in the following ways:
Develop and manage a global legal framework for the protection of Company’s intellectual property portfolio
Manage patent prosecution; participate in and implement IP strategy, including preparing and filing US patent applications and assisting in filing applications in other jurisdictions and other foreign office actions
Provide practical legal advice regarding intellectual property and global portfolio management that furthers business strategies/objectives
Participate in and internal patenting committees
Conduct invention disclosure interviews to identify new patentable ideas
Assist with intellectual property due diligence in mergers and acquisitions and other strategic initiatives that involve Company’s intellectual property
Act as trusted advisor for mid to high level management; has strong grasp of business environment; effectively partners with clients to identify and design needed improvements; provides legal as well as practical advice within the appropriate business context; understands and manages client expectations.
Assist in development of legal strategies for business and shares in management of outside counsel relationships
May influence or contribute to overall objectives and goals of organization
Demonstrate specialization proficiency in one or more areas of law, specialty or function;
Support large and/or complex cases and matters worldwide
Responsible for project and matter management with appropriate supervision;
Provide support and leadership in improvement and issue-resolution projects in both the Legal function and within the business units.
Provide mentorship in support of patent prosecution
Work with engineering and other business organizations to understand priorities and challenges
Instruct and supervise outside counsel and consultants as needed
Analytical Reasoning - The ability to evaluate and analyze data and information, draw conclusions and present an argument based upon the analysis. The use of critical thinking, analytical reasoning, and problem-solving skills are critical to analytical reasoning.
Influencing - Encourages others to change their mindset and/or behaviors to achieve positive results. Presents convincing justification for others to accept ideas and plans. Encourages the open expression of opinions and disagreements. Effectively gains commitment with others to produce high quality work.
Communication - Written and Verbal - Effectively expresses messages and ideas in a clear, organized and relevant manner for a variety of audiences. Develops organized, complete, and convincing communications. Ability to communicate effectively to different levels of the organization.
Relationship Management - Develops rapport, builds trust, and creates value in relationships. Identifies networking opportunities and effectively communicates across functions, business units and with both internal and external business partners.
Conflict Management - Deals with conflict in a way that recognizes and manages differing opinions and ideas and refocuses them in a positive and productive manner. Brings conflict and disagreement into the open and attempts to offer a fair resolution collaboratively while maintaining a constructive working relationship
Juris doctor degree from an accredited law school
Professional licence to practice law in one state
Intellectual property legal experience of 5-9 years, in a law firm, government, in-house or a combination
B.S. in electrical engineering, computer science, material science, or physics; mechanical engineering with experience in software
High level technical legal skill required
Experience negotiating and drafting IP related agreements (M&A experience not required, but preferred)
Experience with expertise in intellectual property agreements, including joint development agreements, patent/trademark/copyright licenses and other IP agreements
At least 5 plus years of relevant intellectual property experience, including global and domestic patent prosecution; developing patent strategies, conducting patent analysis, and global IP portfolio management
IP litigation experience highly desired
Experience prosecuting software and/or analytical device patents preferred
Primary Location United States-Indiana-Indianapolis-US, IN, Indianapolis, Cummins DBU Headquarters
Job Type Experienced - Exempt / Office
Recruitment Job Type Exempt - Experienced
Job Posting Apr 16, 2021, 3:35:07 PM
Unposting Date Ongoing
Req ID: 210000G1