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Global Director - Intellectual Property
Eaton located in Dublin, Ireland has an opening for a Global Director of Intellectual Property.
The position will be located in Dublin and reports directly to the global Chief Technology Officer and indirectly to the Chief Intellectual Property Counsel.
Other essential functions of the role include:
A. Working with and providing advice and recommendations to the EVP/CTO and other appropriate stakeholders to define the strategy of the global IP function.
B. Providing advice and recommendations to the EVP/CTO in managing and directing the development, enhancement, maintenance, protection, and exploitation of Eaton’s IP rights globally, including advice and recommendations pertaining to patents, know-how and trade secrets, and rights under contracts and government licenses.
C. Working cooperatively with a globally-dispersed team of IP support staff in the US, EMEA, and APAC, including IP attorneys, paralegals, and an administrative support team.
D. Designing and implementing procedures and processes, to support the IP strategy created by the EVP/CTO, to ensure the efficient handling of all IP-related processes, including setting and measuring key performance indicators, and ensuring that domestic and relevant foreign IP laws are monitored and that processes and practices are promptly adapted to reflect important legal changes.
E. Working closely with other Eaton senior corporate and operations management to ensure that IP strategy meets the businesses’ needs including, among others, the Eaton corporate functions and the Eaton operating businesses.
F. Managing inter-company agreements between the Eaton group of companies (including e.g., by way of establishing the terms of license and contract R&D transactions in written contract), and managing agreements between third parties and Eaton Intelligent Power Ltd.
G. Working closely with the US based Global Chief Counsel IP to ensure that IP strategies between Eaton’s geographic regions are aligned where required.
H. Working with other functions within Eaton and senior Eaton management to handle high profile IP activities with cross-functional ramifications, such as litigation.
I. Providing advice and counseling to the EVP/CTOand Eaton attorneys on all aspects of IP.
J. Selecting, directing and assess outside counsel that provide IP services to the businesses.
K. Assessing, interviewing and hiring high-caliber IP professionals as well as support staff when
L. Ensuring that, in combination with your own efforts, the following functions are successfully provided for the Eaton businesses:
Contract Advice: Providing advice and assistance on the negotiation on the IP aspects for a wide variety of contracts, including: confidentiality agreements, purchase or sales agreements, joint R&D agreements, contract manufacturing or subcontracting design and development agreements, licensing agreements, and business acquisitions.
- Patent Prosecution: Interfacing with engineers to identify inventions. Establishing appropriate legal ownership over all IP under relevant local intellectual property laws and registration systems. Managing and assessing IP disclosures. Helping to decide whether or not to seek patent protection. Drafting and prosecuting patent applications, including the management and supervision of this activity by outside counsel. Protecting all IP against unauthorized appropriation or imitation under such intellectual property laws and registration systems as well as under unfair competition legislation or other enforceable laws, or by contract
- Patent/Registered Right Searching: Searching patent information databases for novelty and infringement assessment purposes in connection with new inventions and development projects and in relation to carrying out IP landscape searches. This will include the use of the well-known commercially available databases, and may include contracting with outside searchers.
- Infringement Opinions: Providing infringement opinions, either internally or with the use of outside counsel.
- Freedom to Operate Strategy: Advising upon appropriate strategies for infringement avoidance, providing freedom to operate opinions, assisting in the development of “engineer around options,” initiating nullity and invalidity proceedings, and working with Eaton businesses, and where appropriate, instructing outside counsel in connection with these actions.
- IP Education: Preparing and delivering IP education in the form of seminars or presentations for engineers, sales and marketing managers and senior business leaders.
- Developing IP Strategies: Different Eaton business units operate in very different markets and in different ways. It is therefore necessary to devise and implement differing IP protection strategies for different units.
- Portfolio Management and Review: Regularly reviewing Eaton Intelligent Power Ltd.’s patent portfolio for the purpose of retaining only those that are of commercial value.
- Assist and Support Acquisitions and Divestitures: Provide IP support for business acquisitions and divestitures, including assisting with due diligence activities.
- Knowledge of Supported Businesses: The successful candidate will be expected to ensure that close relationships are built and maintained with and between the businesses, which will include a strong knowledge of products and activities of Eaton’s businesses.
Undergraduate degree in science or engineering.
Juris doctorate degree or an MBA in conjunction with a Master’s in Intellectual Property Law.
US or European patent attorney/agent registration and/or qualification.
At least 10 years post registration /qualification intellectual property law experience.
At least 5 years in multinational industrial practice.
- Outstanding communications skills, both written and oral.
- Pro-active thinker, able to anticipate new issues and opportunities on both a strategic and tactical level.
- Strong work ethic with high standards and the ability to work independently as well as in a collaborative team.
- High energy and enthusiasm to pro-actively seek opportunities for continuous improvement .
We make what matters work. Everywhere you look—from the technology and machinery that surrounds us, to the critical services and infrastructure that we depend on every day—you’ll find one thing in common. It all relies on power. That’s why Eaton is dedicated to improving people’s lives and the environment with power management technologies that are more reliable, efficient, safe and sustainable. Because this is what matters. We are confident we can deliver on this promise because of the attributes that our employees embody. We’re ethical, passionate, accountable, efficient, transparent and we’re committed to learning. These values enable us to tackle some of the toughest challenges on the planet, never losing sight of what matters.
Region: Europe, Middle East, Africa
Organization: Corporate Sector
Job Level: Director
Is remote work (i.e. working from home or another Eaton facility) allowed for this position?: No
Does this position offer relocation?: Relocation from within hiring region only
Travel: Yes, 25 % of the Time