Patent Counsel

Shelton, CT

#LI-SL1

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.

• 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.
  
  

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.