Director - IP and Products Counsel

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Director - IP and Products Counsel

DUTIES: Manage and develop intellectual property portfolio, with primary emphasis on U.S. and international utility and design patents. Manage budget and workload and distribute to the best available resource. Review all new product initiatives to ensure clearance against outside intellectual property holdings and advise the organization with respect to risk exposure. Negotiate acceptable risk tolerance and drive clarity on decisions throughout the organization. Quarterly Patent Reviews to Senior Management. This position requires independent judgment, pragmatic advice, demonstrative business perspective, creative problem-solving abilities, and positive client and associate relationships. Build and Manage the Intellectual Property Portfolio (Patents, Trademarks, Trade Secrets). Manage a small in-house staff of Patent Attorneys, Patent Engineers and IP Paralegals to accomplish Corporate Goals. Manage the Intellectual Property Budget and work to stay within agreed upon limits. Negotiate to adjust budget needs as necessary. Gain consensus for patent filing priority, identify appropriate resources, and ensure high quality patent filings. Coordinate decision meetings for maintenance fees and annuities. Ensure that all non-GPD product ideas are thoroughly reviewed and maintain a process to make patent searching and filing decisions. Coordinate Patent Risk Management Activities. Understand all new product initiatives and make decisions to ensure that adequate steps are being taken to control risks to an acceptable level. Understand in-house and outside capabilities and direct work to the most efficient use of resources. Thoroughly understand risk associated with new product development, ensure clarity, and track to make sure that mitigating initiatives are properly implemented. Maintain a system to ensure that pending competitive concerns are adequately tracked to provide an early warning system for potentially troublesome patent claims. Dispute Resolution (up to litigation). Manage the patent clearance process and keep track of potentially troubling claims. Implement strategies to minimize the risk. Ensure communication throughout the organization and immediately update when the risk changes. Direct first-notice of competitive disputes to the appropriate in-house or outside counsel. Get and early read on the risk presented and report out through the Senior Vice President -- Development and Innovation. Solicit input from Senior Management as necessary to formulate response strategies. Determine the best way to resolve disputes short of litigation. Direct communications between IP staff or outside counsel may be appropriate at an early stage to efficiently resolve disputes early. For disputes in which law suits have been filed, work with the Vice President -- General Counsel to support defense activities as needed. Maintain a list of patent claims against competitors. Although strategy is to avoid disputes and build a defensive patent portfolio, solid claims against competitors can add leverage when disputes arise for other reasons -- i.e. advertising claims, non-compete violations, etc. Special Projects. As identified and requested either by self-initiative or through requests from other areas of the organization. Initiate and manage improvements to IP docketing system. Initiate and manage improvements to the Idea Hopper process. Initiate and manage improvements to the Patent Marking System.

Additional Information

Ref#1900263

Company info

BISSELL
2345 Walker St. NW
Grand Rapids
Michigan
United States 49544
Website : http://www.bissell.com