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Chief Intellectual Property Counsel

Company: Newell Brands
Location: Atlanta
Posted on: September 17, 2020

Job Description:

Position Title: Chief Intellectual Property Counsel

Location: Atlanta, Georgia

Reports to: Chief Legal & Administrative Officer

Reporting to the Chief Legal & Administrative Officer, the Chief Intellectual Property Counsel develops and executes the Company’s overall intellectual property strategy, manages the prosecution, management, and enforcement of Company’s IP portfolios (patent, trademark, and copyright), reviews and negotiates IP-related agreements, and provides general support and advice regarding IP-related issues for the Company and its affiliates.

Essential Duties and Responsibilities

• Recommends optimal strategies for protecting, leveraging, and optimizing Company’s intellectual property portfolios

• Manages patent and trademark clearance processes and advises on related business risks and alternatives

• Develops and manages internal invention disclosure and patent protection program

• Creates robust training program to educate Company personnel on wide range of IP-related matters, including freedom to operate, risk management, and patent and trademark best practices

• Works with other Company personnel to determine which intellectual property to formally protect and manages preparation, filing, and prosecution of patent, trademark, and copyright applications

• Supports cross-functional efforts by conducting due diligence regarding potential development and investment activities

• Reviews and negotiates IP-related agreements, including in-licenses, out-licenses, collaboration agreements, purchase agreements, and development agreements

• Manages IP budget to optimize use of resources and meet designated cost targets

• Acts as a resource for other Company personnel regarding all areas of intellectual property law, including patents, trademarks, copyrights, trade secrets, infringement, and licensing (including open source), as well as advertising claims

• Personally manages patent portfolios for one or more business unit(s), including managing utility patent application filings and prosecution, and drafting design patent applications

• Assists other members of the Legal Department, as needed, in additional legal matters

• Manages brand protection/anti-counterfeit activities and partners with Chief Litigation Counsel to support IP-related litigation

• Supports the IP needs of Newell Brands and its business units

• Manages dedicated team of attorneys and paralegals with a focus on driving collaboration, engagement, and teamwork within the group

• Selects and manages outside counsel and vendors

• Demonstrates honesty, responsibility, integrity and fulfillment of commitments

Qualifications

To perform this job successfully, an individual must be able to perform each essential duty satisfactorily. The requirements listed below are representative of the knowledge, skill, and/or ability required. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.

Requirements

• Minimum of 10 years relevant experience in IP law, including significant experience managing patent and trademark portfolios, with minimum of 5 years patent practice

• Significant experience drafting and negotiating intellectual property-related agreements

• Outstanding academic credentials

• Strong research, writing, and oral communication skills

• Experience managing outside counsel and establishing and monitoring legal budgets on a project basis

• Sound judgment, problem-solving and client management skills

• Ability to work independently, as well as in a team environment

• Ability to be flexible and adapt to a dynamic workload

• Strong organizational skills and focus on sustainable and efficient processes

• Strong sense of integrity and appreciation for confidentiality issues

• Bar certification in good standing

Preferred

• Law firm experience in patent practice

• Computer science or engineering background

• Significant in-house experience, including experience as Chief IP Counsel or Chief Patent Counsel

Newell Brands (NASDAQ: NWL) is a leading global consumer goods company with a strong portfolio of well-known brands, including Paper Mate, Sharpie, Dymo, EXPO, Parker, Elmers, Coleman, Marmot, Oster, Sunbeam, FoodSaver, Mr. Coffee, Graco, Baby Jogger, NUK, Calphalon, Rubbermaid, Contigo, First Alert, and Yankee Candle. For hundreds of millions of consumers, Newell Brands makes life better every day, where they live, learn, work and play. Newell Brands and its subsidiaries are Equal OpportunityEmployers and comply with applicable employment laws. EOE/M/F/Vet/Disabled are encouraged to apply.

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Newell Brands is an equal opportunity and affirmative action employer. We provide all employees and applicants for employment with equal employment opportunities without regard to race, color, religion, gender, age, national origin, sexual orientation, gender identity, citizenship, immigration status, marital status, military status, any covered veteran status, disability status, genetic information, caregiving responsibilities or any other basis prohibited by law.

Click here to view the “EEO is the Law” poster and additional EEO information.

Keywords: Newell Brands, Atlanta , Chief Intellectual Property Counsel, Other , Atlanta, Georgia

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