Avery Dennison Corporation 
is seeking a Sr. Group IP Counsel to work in its Mentor, Ohio offices (30 minutes east of Cleveland).
The scope and responsibilities of the position include providing both U.S. and international intellectual property ("IP") services to Avery Dennison’s Materials Group of businesses, focusing on research, development and innovations, joint development efforts, patent preparation and prosecution, trade secret management and protection, potential business acquisitions, IP litigation, IP transactions, and opinions relating to patents, both foreign and domestic. This attorney will work closely with the Global VP of Research & Development and the Global VP of Marketing for the Materials Group of Avery Dennison, and their leadership teams, as a key business partner for the company’s IP and growth efforts. The intellectual properties of Avery Dennison are extremely valuable assets and include patents, trademarks, copyrights and trade secrets. This position is based in the company’s regional office of the Law Department, in Mentor, Ohio.
- In your role as Sr. Group IP Counsel, delivering on these responsibilities is critical to success:
- IP strategy that targets growth and other key market segments, and supports new product innovations.
- Provide a full spectrum of intellectual property legal services including: client counseling; technology development and licensing contracts; and patent protection, surveillance, enforcement, licensing, and litigation.
- Conduct patent novelty, validity and right to market studies and patent and information searches using internal and external resources and vendors, analyzing and summarizing search results.
- Strategic guidance as a business partner integrating legal advice with critical business strategies for product development, joint development efforts, licensing matters, and IP disputes.
- Draft and file patent applications and liaison with inventors and other internal IP lawyers and staff for the information needed to prepare and file patent applications; conduct such drafting and liaison activities.
- Draft and file foreign and PCT patent applications and liaison with inventors, foreign counsel, and other internal IP lawyers and staff for the information needed to prepare and file patent applications.
- Attend to ongoing patent prosecution, including preparing responses to Office Actions received from patent office, foreign and domestic.
- Transaction services include IP agreements such as license agreements, secrecy agreements, joint development agreements, and consulting agreements.
- IP related advice for M&A assessments and negotiations.
- Litigation services include advising the clients regarding potential and pending litigation; selecting and managing litigation counsel and the course of litigation; settlement agreements.
- Client Counseling services include advising on the cost and effective use of intellectual property, and avoiding or reducing the adverse impact of third party intellectual property; counseling on legal issues relating to advertising and promotional programs; counseling on e-commerce issues.
- Leadership responsibilities for the IP team, inspiring a motivated team that engages with outstanding service in support of the global R&D and marketing organizations.
- Strong collaboration skills to engage with and leverage colleagues within the global law department.
- Budget planning, forecasting and management designed to achieve R&D and marketing performance and cost goals.
What You Will Need to Bring to the Team
Avery Dennison has a long history of being a leader in innovation. Your history is important to us. It should include the following:
Education
- Must possess a technical degree, preferably in Chemistry or Chemical Engineering, or a related field.
- Must possess a law degree, be registered with the USPTO, and be a member of the Bar in good standing.
Experience
- Must have at least 10-15 years of patent law experience, including litigation, IP transactional, patent drafting and prosecution, freedom to operate opinions; law firm experience is desirable.
- Familiarity with technologies relating to Avery Dennison’s products and business strategies is a plus.
- Must have the ability to deal effectively with complex legal issues that have both legal and business ramifications, as well as be proficient at defining and implementing new business and law department processes to ensure efficiency and effectiveness.
- Experience with other intellectual property (IP) such as trademark and copyright is useful.
- Must have strong communication and interpersonal skills, with a demonstrated record of collaboration and successfully engaging with global teams.
- A strong working knowledge of and experience with PCT, European patent practice, and China patent practice is highly desirable.
- Highly skilled at drafting patents (patent prosecution).
- Outstanding Client counseling skills is required.
- Must have transactional experience (licensing, JDA, partnering agreements, negotiation experience with universities)
- Litigation experience is highly preferred.
Travel
- Travel to Europe and Asia will be required; approximately 25-35% travel.
Contact
Apply online by visiting this link: https://www.averydennison.apply2jobs.com/ProfExt/index.cfm?fuseaction=mExternal.showJob&RID=11322&CurrentPage=1.
Additional Info
Employer Type: Large Corporation
Job Location: Mentor, Ohio