IP Counsel/Sr. IP Counsel

  • 8080 Norton Pkwy, Mentor, OH 44060, USA
  • Full-time

Company Description

Avery Dennison (NYSE: AVY) is a global materials science company specializing in the design and manufacture of a wide variety of labeling and functional materials. The company’s products, which are used in nearly every major industry, include pressure-sensitive materials for labels and graphic applications; tapes and other bonding solutions for industrial, medical, and retail applications; tags, labels and embellishments for apparel; and radio frequency identification (RFID) solutions serving retail apparel and other markets. Headquartered in Glendale, California, the company employs more than 30,000 employees in over 50 countries. Reported sales in 2019 were $7.1 billion. Learn more at www.averydennison.com.

Job Description

The scope and responsibilities of the position include providing global intellectual property (“IP”) services to Avery Dennison, including IP strategy, domestic and international IP procurement, enforcement, and clearance, business counseling, and transactional support. The position reports to the Global VP and Associate General Counsel, IP, and works closely with the company’s technology and innovation leadership teams, as well as Regional Directors of R&D, Marketing, and Procurement. This position will be based in Mentor, Ohio, USA.

To be successful in your role of IP Counsel/Sr. IP Counsel, we need you to deliver on these responsibilities:

  • Deliver highly skilled patent procurement services. Coordinate the drafting and filing patent applications (domestic, foreign and PCT applications), liaising with inventors, internal IP lawyers, agents, staff, and foreign counsel to acquire the information needed to prepare and successfully prosecute patent applications.
  • Support global IP strategy that targets growth in key market segments and accelerates new product innovations in each key market around the world.
  • Provide a full spectrum of intellectual property legal services including: client counseling; technology development and licensing contracts; trade secret protection, and patent and trademark protection, surveillance, enforcement, licensing, and litigation.
  • Conduct patent novelty, validity and right to market studies, patent and information searches, and analyzing and summarizing search results.
  • Provide strategic mentorship as a business partner to R&D, Marketing, and Procurement by integrating legal advice with critical business strategies for product development, joint development efforts, and licensing matters.
  • Provide IP related advice for M&A assessments and negotiations, joint ventures, and start-up investments.
  • Strong collaboration skills to engage and partner with colleagues in the global law department and global client teams.

Qualifications

Avery Dennison is a leader in innovation. Your experience should include the following:

  • Demonstrated strength at collaboration in matrix organizations, especially in a global organization and across functions.
  • Outstanding understanding of, and ability to take and manage, risk.
  • Strong business sense, and ability to connect the law and legal strategies to business goals in way that guides clients to successful outcomes.
  • Demonstrated ability to lead.

Education and Credentials:

  • A technical degree is required, preferably in Electronics, Electrical Engineering, Computer Science or Engineering, particularly RFID, transponders, sensors, and printer systems, or in Chemistry, Chemical Engineering, or Materials Science or Engineering, particularly polymer chemistry.
  • A law degree with excellent credentials, registration with the USPTO, and a member of the Bar in good standing is also required.

Required Experience:

  • At least 10 years of patent law experience, including strong business counseling and strategy, IP-related transactions, patent drafting and prosecution, freedom to operate opinions, and litigation.
  • Experienced with various types of transactions (M&A, JV, licensing, JDA, partnering agreements, negotiation experience with universities).
  • Proven ability to deal effectively with complex legal issues that have both legal and business ramifications.
  • Strong communication and interpersonal skills, with demonstrated experience of collaboration and successfully engaging with global teams.
  • Demonstrated ability to lead and build relationships at a distance.
  • Demonstrated excellence in client counseling.
  • Highly experienced in technology relevant to Avery Dennison’s products, particularly RFID, transponders, sensors, and printer systems.

Preferred Experience:

  • A strong working knowledge of and experience with PCT, European patent practice, and China patent practice is highly preferable.
  • Demonstrated experience with technologies relating to Avery Dennison’s products and markets is strongly preferred.
  • Litigation experience is a significant plus.
  • Experience with other IP such as trademarks and copyrights is useful.
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Additional Information

All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, national origin, sexual orientation, gender identity, disability, protected veteran status or other protected status. EEOE/M/F/Vet/Disabled. All your information will be kept confidential according to EEO guidelines.

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