Director -- IP and Products Counsel

Company: BISSELL Homecare, Inc
Location: Grand Rapids
Posted on: September 12, 2020

Job Description:

Director -- IP and Products Counsel #1900263

Grand Rapids , MI

Published Job Title

Director -- IP and Products Counsel

Alternate Posting Locations

Walker MI

Job Title

Director -- IP and Products Counsel

Job Description

POSITION SUMMARY: (Summary description of the primary duties and objectives) This is a key position implementing BISSELL's patent and product liability reduction strategies requiring independent judgment, pragmatic advice, demonstrative business perspective, creative problem-solving abilities, and positive client relationships. DUTIES AND RESPONSIBILITIES: 1. Manage and develop BISSELL's intellectual property portfolio, with primary emphasis on U.S. and international utility and design patents. 2. Manage budget and workload and distribute to the best available resource. 3. Review all new product initiatives to ensure clearance against outside intellectual property holdings and advise the organization with respect to risk exposure. 4. Negotiate acceptable risk tolerance and drive clarity on decisions throughout the organization. 5. Quarterly Patent Reviews to Senior Management. This position requires independent judgment, pragmatic advice, demonstrative business perspective, creative problem-solving abilities, and positive client and associate relationships. SPECIFIC RESPONSIBILITIES * Build and Manage the BISSELL Intellectual Property Portfolio (Patents, Trademarks, Trade Secrets) o Manage a small in-house staff of Patent Attorneys, Patent Engineers and IP Paralegals to accomplish Corporate Goals. o Manage the Intellectual Property Budget and work to stay within agreed upon limits. Negotiate to adjust budget needs as necessary. o Gain consensus for patent filing priority, identify appropriate resources, and ensure high quality patent filings. o Coordinate decision meetings for maintenance fees and annuities. o Ensure that all non-GPD product ideas are thoroughly reviewed and maintain a process to make patent searching and filing decisions. * Coordinate Patent Risk Management Activities o Understand all new product initiatives and make decisions to ensure that adequate steps are being taken to control risks to an acceptable level. o Understand in-house and outside capabilities and direct work to the most efficient use of resources. o Thoroughly understand risk associated with new product development, ensure clarity, and track to make sure that mitigating initiatives are properly implemented. o Maintain a system to ensure that pending competitive concerns are adequately tracked to provide an early warning system for potentially troublesome patent claims. * Dispute Resolution (up to litigation) o Manage the patent clearance process and keep track of potentially troubling claims. Implement strategies to minimize the risk. Ensure communication throughout the organization and immediately update when the risk changes. o Direct first-notice of competitive disputes to the appropriate in-house or outside counsel. Get and early read on the risk presented and report out through the Sr. Vice President -- Development and Innovation. o Solicit input from Senior Management as necessary to formulate response strategies. o Determine the best way to resolve disputes short of litigation. Direct communications between BISSELL IP staff or outside counsel may be appropriate at an early stage to efficiently resolve disputes early. o For disputes in which law suits have been filed, work with the Vice President -- General Counsel to support defense activities as needed. o Maintain a list of patent claims against competitors. Although BISSELL's strategy is to avoid disputes and build a defensive patent portfolio, solid claims against competitors can add leverage when disputes arise for other reasons -- i.e. advertising claims, non-compete violations, etc. * Special Projects o As identified and requested either by self-initiative or through requests from other areas of the organization. o Initiate and manage improvements to IP docketing system. o Initiate and manage improvements to the Idea Hopper process. o Initiate and manage improvements to the Patent Marking System.

Job Number

1900263

Job Requirements

REQUIRED EXPERIENCE/EDUCATION: (i.e. degree, years of experience, etc.) * Candidate must have a B.S. degree in engineering and an LLM or JD from an accredited law school, with at least three years of experience in design engineering and at least ten years experience in patent and intellectual property work in private legal practice or for another corporate law department. Experience in BISSELL technology areas are highly desirable, but analogous art is required at a minimum. A license to practice law in Michigan is required, as is registration with the U.S. Patent and Trademark Office. Strong oral and written communication

We endeavor to make this site accessible to any and all users. If you would like to contact us regarding the accessibility of our website or need assistance completing the application process, please contact 866-836-8858.

Keywords: BISSELL Homecare, Inc, Grand Rapids , Director -- IP and Products Counsel, Other , Grand Rapids, Michigan