Siemens Counsel, Intellectual Property in Orlando, Florida

Counsel, Intellectual Property

Locations:Orlando, Florida

Job Family: Legal & Compliance

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English (US)

Job Description

Division: Corporate Technology

Business Unit: Corporate Technology

Requisition Number: 211134

Primary Location: United States-Florida-Orlando

Assignment Category: Full-time regular

Experience Level: Senior level

Education Required Level: Doctorate Degree

Travel Required: 10%

Division Description:

Siemens is a global technology powerhouse that has stood for engineering excellence, innovation, quality, reliability and internationally for more than 165 years. As a global technology company, Siemens is rigorously leveraging the advantages that this setup provides. To tap business opportunities in both new and established markets, the Company is organized in nine Divisions: Power and Gas, Wind Power and Renewables, Energy Management, Building Technologies, Mobility, Digital Factory, Process Industries and Drives, Healthineers and Financial Services.

Our support functions are split into two organizations, Corporate Core and Corporate Services. These organizations provide essential services to better enable responsible and profitable growth.

For more information, please visit: http://www.siemens.com/businesses/us/en/

Job Description:

SUMMARY OF POSITION: IP counsel for Power Generation Services division (PS) reporting to the Division IP (Intellectual Property) Counsel of PS. Job responsibilities relate to protecting, enforcing, and defending Siemens on electrical, electro-mechanical, mechanical, and software related inventions; rendering legal advice and counsel to the PS division with strong coordination with Siemens AG in regard to intellectual property rights (e.g. patents, copyrights, trade secrets, and trademarks). The qualified candidate should be an independent, but skilled teammate that is both a licensed U.S. attorney and a registered U.S. patent practitioner. Candidate will be viewed as a business partner and will be expected to contribute to the success of the business by providing practical IP legal advice to meet the objectives of the business.

ESSENTIAL JOB FUNCTIONS:

• Render expert legal advice on protection of intellectual property rights (IPRs) with inventions and in products/services.

• Render expert legal advice on and manage complex IP litigations.

• Investigate and render legal advice in connection with third-party IP claims.

• Render expert legal advice on the adoption and use of trademarks.

• Manage the preparation, filing, and prosecution of patent, trademark, and copyright applications by both internal patent practitioners and via outside counsel.

• Prepare and prosecute patent applications for filing with various patent offices.

• Prosecute patent applications before the USPTO and guide prosecution in patent offices around the world.

• Conduct and render expert legal advice in connection with product IP clearances and patent investigations.

• Draft and render expert legal advice in connection with IP-related agreements/transactions (e.g., mergers and acquisitions, confidentiality agreements, general IP terms, IP transfer agreements, IP licenses, and the like).

• Manage and maintain a local IP budget.

• Excellent interpersonal skills.

• Excellent communication and coordination skills.

• Ability to effectively work with executives, engineering, and marketing personnel.

• Ability to work independently and maintain an IP docket.

REQUIREMENTS:

• 7 plus years of experience as a practicing attorney in the IP field of law.

• B.S. in engineering (electrical engineering preferred) from an accredited institution.

• J.D. from an accredited institution.

• Admitted and in good standing to practice law in a U.S. state and before the USPTO.

• Experience with preparation of patent applications based upon original invention disclosures and prosecution of such applications before the USPTO and various foreign offices.

• Experience in managing IP litigation.

• Experience in product IP clearances, patent investigations, and IP-related agreements.

• Experience in trademark and copyright law.

• Experience with trade secret laws/protection.

*LI-JMT

Equal Employment Opportunity Statement

Siemens is an Equal Opportunity and Affirmative Action Employer encouraging diversity in the workplace. All qualified applicants will receive consideration for employment without regard to their race, color, creed, religion, national origin, citizenship status, ancestry, sex, age, physical or mental disability, marital status, family responsibilities, pregnancy, genetic information, sexual orientation, gender expression, gender identity, transgender, sex stereotyping, protected veteran or military status, and other categories protected by federal, state or local law.

EEO is the Law

Applicants and employees are protected under Federal law from discrimination. To learn more, Click here at https://www.dol.gov/ofccp/regs/compliance/posters/ofccpost.htm .

Pay Transparency Non-Discrimination Provision

Siemens follows Executive Order 11246, including the Pay Transparency Nondiscrimination Provision. To learn more, Click here at https://www.dol.gov/ofccp/pdf/pay-transp_formattedESQA508c.pdf .