IP Counsel

1. 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;

   ·       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.

1. 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.