Intellectual Property Attorney

Invensys Controls is a leading global provider of components, systems and services used in the appliance industry and in heating, air conditioning/cooling, refrigeration and safety products and building systems for the residential and commercial markets.  Invensys Controls has more than 15,000 employees and 40 manufacturing locations worldwide, and operates as a business of Invensys plc, which is headquartered in the United Kingdom and listed on the London Stock Exchange.

 

The division headquarters in Carol Stream has an opportunity for an Intellectual Property Attorney.

 

The Intellectual Property attorney will have primary responsibility for all patent and trademark issues ranging from engineering and design to computer and software issues.  This position will report directly to the General Counsel, but will work closely with the Chief Technology Officer, Engineering, and Marketing and will be responsible for all regions.  In addition, the Intellectual Property attorney will be Controls' representative on the Invensys PLC Intellectual Property Council and will have primary responsibility for implementing the Invensys PLC Intellectual Property training and compliance interactive modules.

 

Percentage of time likely to be allocated to the following areas:

20% Draft and negotiation license agreements, joint development agreements and any other related agreements

15% Assisting General Counsel with development and implementation of global patent prosecution strategies

15% Review legal data and advise organization on appropriate legal action to be taken

15% Work with inventors to provide counseling on invention

15% Coordinate legal matters being handled by outside counsel specific to IP

10% Domestic and Foreign patent and trademark management, preparation and prosecution

5% Prepare fact and expert witnesses for depositions, including working with technical experts in

preparation of expert reports and handling of discovery requests

 

Requirements and skills needed include:

1.  Minimum of 5 years experience in patent drafting and prosecution, trademark and copyright filing and clearance

and infringment opinions required

2.  Licensed to practice before U.S. Patent and Trademark Office (preferred

3.  Licensed attorney in good standing with Illinois State Bar

4.  Minimum of three years experience in working with inventors regarding various aspects of their inventions

5. Substantial experience in intellectual property licensing and transaction issues including draft and negotiation technology

license, development agreements and other IP contracts

6.  Sound and practical judgment

7.  Experience working within an Engineering environment a plus

 

Invensys Controls is an Equal Opportunity Employer.