Senior Counsel – Intellectual Property, Licensing

General Electric
Published
May 15, 2018
Location
Menlo Park, California; Boston, Massachusetts; Niskayuna, New York, United States
Category
IP  
Job Type

Description

About Us:

GE Ventures works to bring new thinking from inside and outside of GE to solve problems and create growth opportunities for GE, our partners and customers. GE Ventures includes venture capital investing, new business incubations, licensing and healthy imagination, GE’s commitment to improve the quality, access and affordability of healthcare.GE offers a great work environment, professional development, challenging careers, and competitive compensation. GE is an Equal Opportunity Employer. Employment decisions are made without regard to race, color, religion, national or ethnic origin, sex, sexual orientation, gender identity or expression, age, disability, protected veteran status or other characteristics protected by law.

Role Summary: 

Provide legal support for patent and technology licensing programs at GE Ventures (from mining and early development to negotiation and closure), as well as manage patent prosecution of various licensing programs within GE Ventures. Leverage advocacy experience to persuasively present before third parties and senior executives and to work collaboratively across internal teams and with GE Businesses to resolve legal and intellectual property issues.

Essential Responsibilities:

  • Provide legal support for technology transfer, joint development, and IP licensing programs, including identifying relevant IP portfolios, developing IP and technology programs, asserting IP, negotiating transactions, drafting IP or technology licenses, and facilitating IP sales, acquisitions, and investments
  • Oversee and manage IP litigation
  • Manage worldwide patent prosecution for various industrial technologies, as well as strategically develop and deploy IP portfolios
  • Collaborate with and supervise outside counsel to enforce and produce high quality IP in a timely fashion
  • Counsel business executives on protecting technology and IP and on legal impact of business decisions or actions
  • Counsel business on protecting IP assets
  • Support technology transfer, joint development and IP licensing programs
  • Draft, review and help negotiate agreements
  • Registration to practice before the USPTO

Qualifications/Requirements:

  • Bachelor’s degree from an accredited college or university
  • JD with a minimum of 10 years of patent litigation and/or licensing experience in industrial technical areas and markets including experience in drafting technology transfer and patent licensing agreements
  • Licensed and in good standing to practice law in a state or territory of the U.S.
  • Ability and willingness to travel a minimum of 25%

Desired Characteristics:

  • Master’s degree and/or PhD in electrical engineering or physics
  • Demonstrated experience with patent portfolio management
  • Experience with risk assessment, validity/invalidity, and patentability opinion work
  • Ability to work independently and as part of a team and matrixed organization, and ability to manage diverse workload and prioritize tasks
  • Excellent oral and written communication skills and strong ability to communicate effectively with internal customers, leadership, business units, research collaborators, and with the members of a global team
  • International patent prosecution experience
  • Extensive knowledge of laws, rules, regulations and practice in major national and regional patent systems, treaties and conventions
  • Demonstrated ability to manage complex initiatives and projects in a matrix environment across multiple business units.
  • Strong PC proficiency (Microsoft Suite including: Word, Excel, PowerPoint, and Outlook) or comparable software applications.
  • Demonstrated leadership and strong facilitation skills
  • Demonstrated organizational skills, attention to detail, and accuracy

Locations:

Niskayuna, New York; Menlo Park, California; Boston, Massachusetts.

GE will only employ those who are legally authorized to work in the United States for this opening.

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