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ITW · 1 day ago

Group Technology Counsel

Glenview, IL

Full-time

Onsite

Senior Level, Lead/Staff

$230K/yr - $260K/yr

15+ years exp

ITW is a leading diversified manufacturer of specialized industrial equipment and consumables. The Group Technology Counsel will provide legal advice on intellectual property matters for ITW’s Food Equipment Group and Construction Products Segments, working closely with business partners and managing a worldwide IP portfolio.

IndustrialManufacturing

Responsibilities

Principal attorney for intellectual property matters for ITW’s FEG and Construction Segments, including responsibility for patents, trade secrets, trademarks, software, domains, and artificial intelligence while working together with Group Technology Counsel based in Europe and China

Becoming a close business partner to the divisions in the FEG and Construction Segments and learning their businesses, products, and markets

Meeting and conferring with outside counsel and business leaders on IP strategy, freedom to operate, reducing risk, enforcement, and defense

Supporting the management of a diverse, worldwide IP portfolio based on a strategy developed with the FEG and Construction Segments, including overseeing outside counsel’s preparation and prosecution of patent and trademark applications, and the securing of copyrights, trade secrets, and domains

Partnering closely with the engineering and product teams to identify and capture new inventions and counsel on competitor IP landscape

Assisting in the selection and management of outside counsel in the prosecution/defense of various IP legal issues, including freedom to operate and infringement opinions

Quickly becoming familiar with the patent and trademark portfolios to counsel the businesses and make decisions on securing worldwide protection, annual renewals and enforcement

Leading IP litigation, including counseling the business, assessing risk and strategy, managing outside counsel and budgets, and negotiating settlements

Rendering IP-related legal opinions on issues such as artificial intelligence risk, freedom to operate, ownership, infringement, and validity

Drafting and negotiating IP-related terms and conditions and agreements, such as confidentiality and development agreements, supply agreements, licenses, EULAs, open-source license attributions, consulting agreements, artificial intelligence and sweepstakes and contests

Interpreting court decisions, conducting legal research, and being knowledgeable about statutes and governmental regulations to provide legal advice on current and pending IP legal developments

Supporting IP-related due diligence in commercial transactions, such as acquisitions, divestitures, and licensing

Training business teams on IP-related topics

Some travel is required to various worldwide ITW businesses to partner with the Innovation, R&D, and Management teams of those businesses and establish/support their IP strategies

Qualification

Intellectual Property LawPatent ProsecutionTrademark ProsecutionClient CounselingContract NegotiationDue DiligenceTrade Secret ProtectionIP LitigationMechanical EngineeringLegal ResearchCommunication SkillsOrganizational SkillsInterpersonal SkillsLeadershipStrategic Thinking

Required

JD degree from an ABA-accredited law school and admission in good standing to the Illinois state bar

Admission to practice before the USPTO as a registered patent attorney

A degree in Mechanical Engineering, or another relevant scientific or engineering degree, is required

Minimum of 15 years of progressively more responsible work experience in intellectual property law, working with businesses with a global footprint

A combination of law firm and in-house experience is strongly preferred

Practice experience must include US and foreign patent and trademark preparation for a worldwide IP portfolio, client counseling on a broad range of IP issues, opinion work, contract preparation and negotiation, due diligence, trade secrets, and IP litigation

Ability to work 5 days a week onsite at the Glenview corporate campus, with flexibility on hours

Ability to provide strategic thought leadership; build strong relationships with superiors, peers, and subordinates; collaborate across the organization; and influence without direct authority

A candidate must be self-motivated and exhibit a passion for understanding ITW's business and contributing in a meaningful way to its strategy and long-term strategic goals

Preferred

Excellent written and verbal communication and presentation skills

Solid organizational skills and ability to build consensus with clients

Strong interpersonal skills and ability to work well in a dynamic environment with other in-house and outside attorneys and with the Company's technical and business personnel

Confident executive presence and excellent business acumen

Demonstrated success managing complex and competing organizational priorities in a fast-paced environment

Strong leader and collaborator; focused on organizational and team success

Pragmatic, doesn't overcomplicate, but provides practical solutions and implementation strategies

Approach this role from a business perspective and demonstrate a high degree of ethics and integrity, as well as strategic/conceptual thinking capabilities

Personal and professional ‘fit' within ITW's culture is of paramount importance. A low-ego/high-team mentality is crucial