Job Title
Lead IP Counsel, Americas
Job Summary
The Lead IP Counsel, Americas position is responsible for delivering expert legal services and guidance to the Company across all product lines. Reporting directly to the Global Head of IP as part of the Global IP team, this position involves regular and significant engagement with senior management. The successful candidate will play a critical role in fostering collaboration between the legal and business teams to safeguard Vertiv's intellectual property. Key responsibilities include executing licensing strategies, ensuring the protection of the company's IP assets, and promoting the cost-effective operation of the IP department.
The ideal candidate brings substantial experience in IP law and portfolio management, with a demonstrated ability to align IP strategy with business objectives. In this role, you will help shape the Company's intellectual property direction while providing strategic advice to senior leadership on complex legal issues. A thorough understanding of patent, trademark, copyright, and trade secret law is essential, as well as the capability to translate business initiatives into effective IP protection measures. Proficiency in risk assessment, high-level negotiation, and working within dynamic, cross-functional teams is required. Outstanding communication and leadership skills are fundamental, as you will guide IP policies, mentor internal stakeholders, and ensure compliance with regulatory requirements across multiple jurisdictions.
Key Responsibilities
Portfolio and Operations Management
- Manage all aspects of the Company’s IP portfolio, covering patents, trademarks, copyrights, and trade secrets.
- Regularly review IP assets to assess their value and relevance.
- Create and execute strategies to maintain, expand, and optimize IP holdings.
- Work with engineers, product development, and business leads to identify and protect new IP.
- Enhance departmental best practices to increase cost-effectiveness and oversee outside IP counsel and vendors.
Strategic Planning
- Formulate and implement long-term IP strategies to support major business objectives.
- Remain current with both industry and competitor developments, and technological advancements as well as legal developments to proactively refine IP approaches.
- Advise senior management on strategic IP issues, including risk assessment and mitigation planning.
- Negotiate and draft licenses, joint development agreements, and other IP-related agreements, ensuring adherence to company policies and the achievement of favorable outcomes.
- Assist in the management of the Company’s global patent and trademark portfolio strategies.
- Provide counsel and frameworks for safeguarding the Company’s trade secrets.
- Support due diligence processes and other IP considerations related to M&A activities.
Leadership and Development
- Work closely with the Global IP Team to meet business goals by delivering practical legal advice.
- Develop and implement efficient IP processes and workflows.
- Advise senior leaders with actionable, business-focused guidance to foster collaboration across the organization and with external partners.
Minimum Education and Related Experience
- Law Degree from a leading law school.
- Science or engineering undergraduate or graduate - degree, preferably in mechanical or electrical engineering.
- Admitted to practice in at least one state and admitted to practice before the United States Patent and Trademark Office.
- Minimum of five (5) years' experience as a senior intellectual property lawyer at a respected in-house legal department or an associate / partner of a respected law firm specializing in intellectual property.
Qualifications and Skills
- Proven analytical skills and understanding of a broad range of engineering concepts, ideally including HVAC systems, power systems, liquid cooling, and computer science principles
- Excellent communication skills in speaking, writing, and presenting.
- Excellent organizational skills and experience working effectively with all levels of management.
- Extensive experience in the practice of IP law, including patents, trademarks, copyright, and trade secret law.
- Strong strategic IP protection planning and development skills.
- Strong patent application preparation and prosecution skills, including international patent prosecution.
- Experience drafting and negotiating IP agreements and agreements with IP terms.
- Experience with freedom to use and clearance opinions.
- Experience working with a team of IP attorneys and staff.
- Experience with the administration of, and improvements to, IP operations, including budget management, outside counsel management, IP portfolio management and electronic billing systems.
Licensures/Certifications
USPTO registration or eligibility therefor
Licensed Attorney in Ohio or eligibility therefor
Travel Requirements
Travel: 10%
