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Corporate Counsel, Product and Intellectual Property

Company: MSA Safety
Location: cranberry
Posted on: May 3, 2021

Job Description:

For more than 100 years, our passionate mission of safety empowers us to protect lives.

MSA Safety is a global leader in the development of safety equipment and pioneering technology that helps protect people and facility infrastructures around the world. We are committed to providing the latest in innovative, best-in class safety solutions that feature integrated systems capability and allow our customers to return safely to their families and friends. Every day our customers place their lives in our hands. In response, we provide them with protection they can trust. It is gratifying to lead the way as a source of inspiration. Would you like to join our team of more than 5,000 employees world-wide dedicated to this purpose? We hope so.

We are searching for a Corporate Counsel, Product and Intellectual Property (IP) to provide legal counseling and strategic advice related to a constantly growing innovative business that implements new and emerging technologies. The successful incumbent will have the opportunity to manage IP portfolio acquisition and maintenance, advise on technology, commercial and business transactions, and assist with IP compliance, training and awareness. This role will allow for collaboration with the Engineering and business teams to support the increasing complexity and significance of global growth and use of IP.

Responsibilities:

  • Manages the drafting, prosecution, and maintenance of the worldwide patent and trademarks portfolios, and advises on portfolio exclusivity positions, including reviewing competitive IP landscapes, clearance searches and freedom to operate.

  • Assists with maintenance of patent and trademark portfolios to assure continued review through life term and, in response to, commercial and development requirements.

  • Aligns with R&D marketing and business teams to identify, assess and protect new IP; counsel and educate scientists and product development teams on IP matters throughout the product development life-cycle.

  • Provides training and advising on IP strategy, enforcement, litigation, compliance, policies and guidelines.

  • Assists with open source software management and compliance.

  • Develops and continually improves current and planned business strategy, products, competitors and markets as well as substantive laws, regulations and legal trends.

  • Provides transactional IP support for various types of agreements including: licensing, collaboration, development, MTA, NDA, etc.

Special Skills, Knowledge and Abilities Required:

  • Demonstrated ability to impact, influence negotiate with internal and external resources, including working directly with business, marketing, and product and engineering functions.

  • Proven ability to work from a continuous improvement perspective and desire to apply business skills to legal services (such as process improvement skill-sets, project management, budgeting and outside counsel management, technology adaption).

  • Enthusiasm for collaborative working and engaging business, technical and legal partners and understanding of product development and launch.

  • Solid organizational skills, attention to detail and ability to handle and prioritize multiple time sensitive projects.

  • Demonstrated ability to distill complexity and to communicate decisively with sound judgment.

Education and Experience Required:

  • Undergraduate and/or masters degree in engineering or other technical experience

  • JD degree

  • Registration before the USPTO and admission in good standing to state bar

This position is available at two different career levels based on experience:

  • Level one--5 years of experience practicing law with emphasis on intellectual property, commercial and technology legal matters

  • Level two--7 years of experience practicing law with emphasis on intellectual property, commercial and technology legal matters

Levels 1 and 2:

  • Demonstrated experience in the following:

handling global intellectual property matters, involving acquisition, maintenance and compliance related to patents, trademarks and copyrights

performing M&A related due diligence

conducting searches, managing freedom to operate, advising on potential patent infringement, and determining patentability

engaging with engineering to promote invention submissions and review

managing patent and/or trademark application drafting and office action response

overseeing patent and trademark enforcement matters, including opposition and cancellation proceedings, demand letters, online takedowns, intellectual property litigation

  • Familiarity with intellectual property licensing, technology transactions and commercial IP matters such as consulting agreements, NDAs, joint ventures and M&A

Preferred:

  • Undergraduate and/or masters degree in mechanical/electric/electronics engineering, computer science

  • Law firm and/or prior industry experience with a technology or software company

  • Familiarity and ability to work with hardware, software, IoT and cloud technology

  • Understanding of open source software, SaaS and data rights

  • Working knowledge of US export laws as applied to technology

  • Familiarity with inventor reward and remuneration programs

  • In-house experience

Requisition ID: 2021-4525

External Company URL: www.msasafety.com

Street: 1000 Cranberry Woods Drive

Relocation benefits per MSA's Domestic Relocation Policies will apply. Is relocation being offered? (Manager is responsible for all associated costs).: Yes

Telecommute: No

Keywords: MSA Safety, Erie , Corporate Counsel, Product and Intellectual Property, Other , cranberry, Pennsylvania

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