Counsel, Intellectual Property

, running, and driving reporting on IP metrics, and ensuring optimal performance of our IP database.

The position will be located in Pune, Maharashtra, India, and reports directly to Vice President and Chief Counsel, Digital, Innovation and Technology.

Essential Function

Registered Patent Attorney in good standing. At least 7 years of post-qualification/registration experience with extensive experience in industrial technologies. IP enforcement (including litigation experience) and licensing experience. The proven ability to successfully direct and collaborate with globally dispersed IP teams, including IP attorneys and support staff. Fluency in both written and spoken English.

Excellent communication skills and a proven ability to interface with all levels of management is a must, including the C-suite. The successful candidate must: have a high degree of initiative, creativity, and an impressive professional presence; be a team player, with the ability to develop and maintain close working relationships with clients, Law Department colleagues, and colleagues in other corporate functions around the world; be proactive; be capable of establishing and achieving stretch goals; think and act strategically, get excellent results; and adhere to the highest standards of business ethics.

The successful candidate will also have: the ability and experience to effectively analyze Eaton's IP position in a diverse range of situations, to provide practical and business-focused recommendations and advice to members of the C-Suite and Law Department colleagues, and to successfully negotiate those positions with third parties; a strong practical knowledge relating to IP transactions; a strong practical knowledge of the global patent laws (e.g., EPC, PCT, IN, EPO, US, etc.); strong technical acumen; demonstrated experience managing IP operations, IP administrators, and delivering optimal performance of an IP database; generate and document IP policies and processes; a substantial understanding of the IP laws and systems across the world, particularly in relation to patents; a commercial outlook, viewing IP as a commercial tool to be used as part of a broader strategy; and experience with all aspects of IP - patents, copyrights, trademarks, and trade secrets.

A willingness to travel to visit other Eaton locations is essential.

Counsel leadership and other appropriate stakeholders to execute the strategy of IP portfolios.

Provide advice and recommendations to leadership in managing and directing the development, enhancement, maintenance, protection, and exploitation of Eaton's IP rights globally, including advice and recommendations pertaining to patents, know-how, and trade secrets, and rights under contracts and government licenses.

Cooperatively work with a globally dispersed team of IP teammates.

Support the corporate IP strategy, to ensure the efficient handling of all IP-related processes, including setting and measuring key performance indicators, and ensuring that domestic and relevant foreign IP laws are monitored, and that processes and practices are promptly adapted to reflect important legal changes.
Lead and drive an IP administrative team and manage IP assets along with streamlining an IP database, while providing transparent and consistent communication and maintenance of same.
Maintaining several business IP portfolios, whereby making recommendations and counseling on protection and enforcement of same.
Closely work with other Eaton senior corporate and operations management to ensure that businesses adhere to and meet the IP strategy.
Manage inter-company agreements between the Eaton group of companies (including, e.g., by way of establishing the terms of license and contract R&D transactions in written contract), and managing agreements between third parties and Eaton Intelligent Power Ltd.
Providing advice and counseling on all aspects of IP.
Provide and lead training courses before the Law Department and business partners.
Manage and assess outside counsel that provide IP services to the businesses.
Ensure that the following functions are successfully provided for the Eaton businesses:

Contract Advice
Patent Prosecution
Patent/Registered Right Searching
Infringement Opinions
Freedom to Operate
IP Education
Portfolio Management and Review
Assist and Support Acquisitions and Divestitures
Knowledge of Supported Businesses

Qualifications:

• Undergraduate degree in science or engineering (electrical, computer, or mechanical preferred).

• Law degree is a must or an MBA in conjunction with a Master's in Intellectual Property Law.

• Patent registration and registered Patent Attorney in good standing.

• At least 7 years post registration/qualification intellectual property law experience

• At least 4 years in multinational industrial practice.

Skills:

• Extensive, profound, and demonstrated knowledge of IP, including patents, trademarks, trade secrets, and copyrights.
• Both law firm and corporate experience preferred.
• Outstanding communications skills, both written and oral.
• Proactive communicator - knows who and when to communicate and when to escalate issues.
• Proactive thinker, able to anticipate new issues and opportunities on both a strategic and tactical level.
• Demonstrated problem solver and willingness to work within a matrixed organization, on teams, and as an individual contributor.
• Strong work ethic with high standards and the ability to work independently as well as in a collaborative team.
• Competence in project management.
• High energy and enthusiasm to pro-actively seek opportunities for continuous improvement.