IP Legal Counsel

About the role

The IP Counsel, Americas position is intended for a junior to mid-level attorney who is dedicated to protecting and enforcing the company's intellectual property portfolio across all product lines. Reporting directly to the Global Head of IP as part of the Global IP team, this role supports senior management and collaborates closely with both business and legal teams to safeguard Vertiv’s intellectual property.

Responsibilities

• Assist with licensing strategies
• Develop IP enforcement objectives
• Identify opportunities to monetize Vertiv’s IP portfolio
• Create and execute strategies to maintain, expand, and optimize IP monetization opportunities
• Enhance departmental best practices to increase cost-effectiveness and oversee outside IP counsel and vendors
• 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 settlement and IP licenses and other IP-related agreements, ensuring adherence to company policies and the achievement of favorable outcomes
• Support due diligence processes and other IP considerations related to M&A activities

Qualifications

• 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 two (2) years' experience as an intellectual property lawyer at a respected in-house legal department or an associate / junior partner of a respected law firm specializing in intellectual property

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
• 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