Senior Manager IP - Culemborg, Nederland - Carrier

Beschrijving

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Role Responsibilities:

• Build and manage the CCR patent portfolio, including: - overseeing and managing outside counsel globally regarding the drafting, filing and prosecuting patent applications, including Interacting with inventors with regard to preparing patent applications and supervising outside counsel in the preparation and prosecution of patent applications;
• Provide clear, informed and sophisticated counseling to CCR on opportunities to protect inventions (Invention Harvesting & White Space Analysis), create and manage IP portfolios, and handling of all invention disclosure aspects;
• Managing opposition and validity proceedings; -
• Work with engineering to monitor competitor products and advising as to whether competitors infringe Carrier patents.
• Advise Senior Management as to potential infringement and overseeing patent litigation, when necessary.;
• Support new product development projects, including managing freedom to operate, infringement and validity analyses, and supporting competitive intelligence and IP monitoring activities;
• Monitor issued third party patents, particularly with regard to questions of infringement and studying patents of concern and rendering or consulting on preparation of opinions regarding the validity and/or infringement of patents for the guidance of management, with goal of minimizing legal risks before CCR products are brought to market; and - providing input on and preparing annuities decisions in relation to the CCR patent and trademark portfolios.
• Draft and negotiate various intellectual property agreements, including development agreements, technical services agreements, software licenses, non-disclosure agreements and other miscellaneous agreements and provide counsel to management and general legal counsel on other agreements that include intellectual property components, such as supply agreements, sales and service contracts and acquisition agreements.
• Work with the CCR marketing and legal team regarding management of trademarks, including working with outside counsel regarding the drafting, filing, prosecuting, and annuity review for the trademark portfolio.
• Provide effective and timely guidance, with clear and concise communication skills, to senior management and general legal counsel on intellectual property matters. Meeting regularly with technical, legal and management personnel on IP matters including active participation in product development meetings and implementation of intellectual property strategies for products under development.
• Maintain and apply deep expertise of applicable international, federal, and state Intellectual Property laws and accreditation standards, and monitor advancements and changes in legal and regulatory requirements and technologies to ensure organizational adaptation and compliance across all CCR business operations.
• Communicate effectively and clearly with colleagues and leadership throughout CCR, and especially within the R&D organization. Build and manage external relationships with outside counsel and collaborators, including substantial interactions within a multicultural, global IP Department. Deliver work results on-time, on-target, and within budget.
• Learn and implement current intellectual property department tools and processes, including implementing continuous improvement of department processes.
• Advise on general IP related business request
• Report directly to General Counsel
  

Qualifications/Competencies:

• Candidate must be a fully qualified European Patent Attorney, ideally combined with a national patent attorney qualification
• Technical/Engineering degree in mechanical, electrical, computer or physics or other qualified technical discipline
• Prior engineering experience is a plus.
• 5+ years of experience relating to patent law and the preparation and prosecution of EP patents gained in a reputable patent attorney firm and/or in-house IP department.
• Fluent in English (written and oral)
• Excellent organizational skills and ability to work independently.
• Ability to effectively communicate within all levels of the organization and manage senior relationships across all business and functional areas.
• Highly developed skills in priority setting and alignment of project priorities with Department strategy
• Demonstrated ability to manage adversity and challenging situations.
• Global perspective with the interest and proven ability to work in a multi-cultural and multi-functional environment, develop and maintain internal partnerships, and ability to interact with colleagues at all levels of the organization with credibility, integrity, and respect.

Carrier is An Equal Opportunity/Affirmative Action Employer. All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability or veteran status, age or any other federally protected class.

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