Corporate Counsel – Large Corporation – Cincinnati, Ohio

Kroger Seasoned attorney with at least five years of prior relevant legal experience. Capable of handling most legal matters with a minimum of supervision. Responsible for developing corporate patent strategy, overseeing Kroger’s patent portfolio, and managing liability.

Essential Job Functions:
• Review and recommend changes to Kroger’s existing patent and invention policies and procedures and implement new processes where needed.
• Educate associates working in areas of the Company where development takes place on how to protect Kroger inventions and avoid infringement of third party rights.
• Work closely with research and development teams in IS&S, Manufacturing, Logistics and other departments to identify research of strategic importance worthy of patent protection.
• Undertake a substantial share of the patent drafting and prosecution work.
• Oversee the retention of outside patent counsel when necessary and manage the interaction between outside counsel and internal clients to eliminate duplication and inconsistency, improve efficiency and reduce cost.
• Implement a patent review committee or other formal process to analyze the value of potential patents and make better decisions on which patent applications to pursue.
• Oversee and maintain Kroger’s patent portfolio and take steps to enforce it when necessary.
• Analyze patents and author patentability, freedom-to-practice/clearance, validity and infringement opinions and provide related advice to the Company.
• Review, respond and provide advice to the Company with regard to claims of patent infringement.
• Assist with management of patent litigation.
• Assist as needed on overflow trademark work and other intellectual property matters.
• Draft, review and negotiate patent licenses, employee invention agreements, and development contracts.
• Oversee patent aspects of corporate mergers and acquisitions and related due diligence studies.
• Ensure that the Company complies with all applicable laws, rules and regulations within the associate’s areas of responsibility.
• Keep supervisor informed of all material legal matters affecting the Company.
• Must be able to perform the essential functions of this position with or without reasonable accommodation.
Minimum Position Qualifications:
• JD from an ABA-accredited law school.
• At least one State Bar membership in good standing.
• Registered to practice with the USPTO.
• Excellent verbal and written communication skills.
• Ability to travel independently.
• Seasoned attorney with at least five years of patent law experience.

Desired Previous Job Experience
:
• Drafting and prosecution of patents (US and foreign).
• Preparation of infringement, validity, freedom to operate opinions and related client counseling.
• Project management experience.

Contact:
Interested candidates should contact Tom Dorgan at tom.dorgan@kroger.com.

Additional Info:
Employer Type: Large Corporation
Job Location: Cincinnati, Ohio