Eaton Corporation Intellectual Property Attorney, APAC in Shanghai Shi, China
Responsibilities include a broad range of challenging intellectual property (IP) rights activities in managing the IP function for the Eaton APAC region and in safeguarding the IP position for the Eaton APAC group of companies excluding India. This will include, among other things, assistance in developing and, more importantly, execution of Eaton’s APAC IP strategy to ensure that IP transactions between Eaton APAC companies and third parties are conducted so as to safeguard Eaton’s interests, that Eaton’s IP is appropriately protected (such as anti-counterfeiting activities), and that appropriate steps are taken to avoid infringement of the IP rights of others. Focus will be to drive the proactive use and implementation of Eaton’s legal IP strategy to fully support and enhance Eaton’s technological growth in the region and the rest of world.
The position will be located at Eaton’s APAC regional headquarters in Shanghai, China and will report to the APAC Vice President & Chief Counsel.
Oversee and manage Eaton’s IP function in the APAC region, including:
Assist Eaton’s global IP function in developing and executing IP strategies in the APAC region, particularly in China.
Implement procedures and processes, to support the developed IP strategies, to ensure the efficient handling of all departmental processes, including setting and measuring key performance indicators for the department, and ensuring that domestic and relevant foreign IP laws are monitored and that departmental processes and practices are promptly adapted to reflect important legal changes.
Work closely with senior corporate and operations management of the APAC region to ensure that IP services provided to the APAC region meet the business needs.
Report to and work closely with the head of the Legal function for the APAC region on wide-ranging departmental matters, including planning and budgeting for the department’s activities.
Work closely with the US based Global Associate General Counsel IP to ensure that IP strategies between Eaton’s geographic regions are aligned and implemented where required.
Work with other functions within Eaton and senior Eaton management to handle high profile IP activities with cross-functional ramifications, such as litigation.
Provide advice and counseling to Eaton APAC management and business functions and Eaton attorneys on all aspects of IP, including NDAs.
Select, direct and assess outside counsel that provide IP services to the APAC businesses.
Be “hands on” and involved in the business and the expanding IP customer base. Have courage of conviction and be prepared to stand up and be counted when required.
Ensure the following functions are successfully provided for the APAC businesses:
a. Contract Advice:
Providing advice and assistance on the negotiation on the IP aspects for a wide variety of contracts, including: confidentiality agreements, purchase or sales agreements, joint R&D agreements, contract manufacturing or subcontracting design and development agreements, licensing agreements, and business acquisitions.
b. Patent Prosecution:
Interfacing with engineers to identify inventions. Managing and assessing IP disclosures. Helping to decide whether or not to seek patent protection. Drafting and prosecuting patent applications, including the management and supervision of this activity by outside counsel.
c. Patent/Registered Right Searching:
Searching patent information databases for novelty and infringement assessment purposes in connection with new inventions and development projects and in relation to carrying out IP landscape searches. This will include the use of the well-known commercially available databases, and may include contracting with outside searchers.
d. Infringement Opinions: Providing infringement opinions, either internally or with the use of outside counsel; must be able to participate in and coordinate regional anti-counterfeiting and other IP enforcement activities.
e. Freedom to Operate Strategy:
Assisting in advising upon appropriate strategies for infringement avoidance and freedom to operate, assisting in the development of “engineer around options,” initiating nullity proceedings, and working with Eaton businesses, and where appropriate, instructing outside counsel in connection with these actions.
f. IP Education:
Preparing and delivering IP education in the form of seminars or presentations for engineers, sales and marketing managers and senior business leaders.
g. Assisting in developing appropriate business unit IP strategies. Different Eaton business units operate in very different markets and in different ways. It is therefore necessary to devise and implement differing IP protection strategies for different units.
h. Portfolio Management and Review:
Assisting the supported Eaton businesses in regularly reviewing their patent portfolios for the purpose of retaining only those that are of commercial value.
i. Assist and Support Acquisitions and Divestitures:
Provide IP support for business acquisitions and divestitures, including assisting with due diligence activities.
j. Knowledge of Supported Businesses:
The successful candidate will be expected to ensure that close relationships are built and maintained between the department and supported client businesses, which will include a strong knowledge of products and businesses activities of client businesses.
· At least 10 years post qualification experience with extensive
experience in commercial, preferably industrial, practice.
· Degree in a suitable technological discipline, preferably electrical or mechanical engineering or physics.
· Patent attorney qualification and/or a corresponding China/APAC region national professional qualification. Familiarity with and experience in analyzing and responding to Chinese laws, practice and government bureaus, including the China State Intellectual Property Office, required ability to effectively implement standardized IP process and address infringement concerns in both administrative and litigation settings is crucial.
· Experience in active participation in anti-counterfeiting and other IP enforcement activities preferred.
· The proven ability to successfully manage and drive implementation and execution of an IP legal strategy, including patent, trademark, copyright and NDA matters. The ability to effectively work with non-legal business engineering, technical and development teams in implementing Eaton’s IP strategy will be crucial.
· Highly developed sense of judgment and risk management skills, with proven ability to think regionally and globally.
· Dynamic professional and team development skills.
· Strong reputation for integrity and ability to balance business interests with the need to exercise independent judgment and to raise (and escalate if necessary) potentially sensitive or contentious issues.
· A high-energy professional style as well as adequate EQ able to effect change within a diverse, rapidly-growing, decentralized and matrix organization.
· Demonstrated legal knowledge, professionalism, sound logic and thinking, and ability to support executives, clients and other attorneys. Ability to think and act strategically. Good problem solver; able to analyze, evaluate and distil complex qualitative and quantitative data and issues into workable parts and report on the same.
· Fluency in both written and spoken Mandarin and English. Fluency in other Asian languages would be an advantage.
· Excellent communication skills and a proven ability to interface with all levels of management is a must. The successful candidate must have a high degree of initiative, creativity and an impressive professional presence. He or she must be a team player, with the ability to develop and maintain close working relationships with clients in the APAC operations, Law Department colleagues in APAC and other geographies, and colleagues in other corporate functions. He or she must be capable of establishing and achieving stretch goals, must think and act strategically, must get excellent results, and must adhere to the highest standards of business ethics.
· The successful candidate will have: the ability and experience to effectively analyze Eaton’s IP position in a diverse range of situations, to provide practical and business-focussed recommendations and advice to internal clients and Law Department colleagues, and to successfully negotiate those positions with third parties; a strong practical knowledge relating to IP transactions; a strong practical knowledge of China IP practice, including administrative and civil processes; a substantial understanding of the China IP laws and systems, particularly in relation to patents, and a good understanding of other APAC countries’ and the US IP laws; and a commercial outlook, viewing IP as a commercial tool to be used as part of a broader strategy.
· The ability and willingness to travel to visit Eaton locations throughout APAC and the US is essential.
We make what matters work. Everywhere you look—from the technology and machinery that surrounds us, to the critical services and infrastructure that we depend on every day—you’ll find one thing in common. It all relies on power. That’s why Eaton is dedicated to improving people’s lives and the environment with power management technologies that are more reliable, efficient, safe and sustainable. Because this is what matters.
We are confident we can deliver on this promise because of the attributes that our employees embody. We’re ethical, passionate, accountable, efficient, transparent and we’re committed to learning. These values enable us to tackle some of the toughest challenges on the planet, never losing sight of what matters.
Region: Asia Pacific
Organization: Corporate Sector
Job Level: Manager
Is remote work (i.e. working from home or another Eaton facility) allowed for this position?: No
Does this position offer relocation?: No
Travel: Yes, 25 % of the Time
Eaton is an Equal Opportunity and Affirmative Action Employer. Eaton is committed to ensuring equal employment opportunities for all job applicants and employees. Employment decisions are based upon job-related reasons regardless of an applicant's race, color, religion, sex, sexual orientation, gender identity, age, national origin, disability, marital status, genetic information, protected veteran status, or any other status protected by law.