Patent Counsel

Hubell
Shelton, CT, US
Full-time

Posting Address

Shelton, CT

LI-SL1

Job Overview

The Patent Counsel position, based in Shelton, CT, will report to the Chief Intellectual Property Counsel and will support the intellectual property function with a primary focus on the patent portfolio.

We are seeking a self-motivated individual with initiative and strong attention to detail who is highly organized and can multi-task competing priorities.

This individual must be an ethical and compliance-oriented team player who can work with legal and business partners at all levels across the Hubbell enterprise.

A Day In The Life

  • Assist in patent portfolio management including managing patent committee portfolio review meetings and building portfolios for a diverse group of business units.
  • Solicit invention disclosures to support portfolio development for several engineering departments.
  • Manage outside counsel through the preparation and prosecution of U.S. and foreign patent applications.
  • Conduct product clearance searches and prepare analysis and manage and review outside counsel product clearance searches and analysis.
  • Conduct analysis relating to potential infringements of company patents.
  • Assist in managing the patent portfolio lifecycle including facilitating maintenance decisions.
  • Facilitate obtaining outside counsel opinions as needed.
  • Conduct mergers and acquisition IP due diligence as needed.
  • Assist in managing several patent portfolio functions including the patent incentive program and the patent marking program.
  • Preparation of patent applications and prosecution depending on experience and resource allocation.
  • Maintain up-to-date knowledge of relevant laws.

What will help you thrive in this role?

Requirements

  • J.D. degree and membership in good standing in one state bar is required.
  • Connecticut bar or ability to obtain Connecticut in-house counsel certification required
  • Admission to practice before the U.S. Patent and Trademark Office required
  • Bachelor’s Degree or higher in electrical or mechanical engineering preferred
  • Minimum 3-5 years of experience in the area of patent law.
  • Effective communicator, with the ability to establish and maintain effective relationships with clients, coworkers, and colleagues.
  • Ability to work autonomously, issue spot and provide incisive, practical and business-focused advice and counsel.
  • Strong project management experience and problem-solving skills with the ability to lead a project from initiation to completion and the ability to balance strategic and tactical issues.
  • Good judgment, a high level of professional integrity, discretion, and tact.
  • Ability to travel up to 20%.

Preferred Qualifications

  • Prior in-house experience a plus.
  • Experience with PATTSY, Innography, and / or CPA / MDC Annuity Service a plus.
  • Experience or interest in trade secret, copyright and / or trademark counseling a plus.
  • Experience in managing intellectual property litigation a plus.
  • Proficiency in Microsoft Power BI, PowerPoint and Excel a plus.
  • 30+ days ago
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