Patent Counsel - Shelton, CT (Hybrid)

Overview

Manage and protect company patent portfolio, conduct filings, reviews, and IP due diligence.

Key Responsibilities

• patent filing
• portfolio management
• product clearance
• ip due diligence
• infringement analysis
• invention disclosure

Tasks

-Preparation of patent applications and prosecution depending on experience and resource allocation. -Maintain up-to-date knowledge of relevant laws. -Facilitate obtaining outside counsel opinions as needed. -Assist in managing the patent portfolio lifecycle including facilitating maintenance decisions. -Conduct product clearance searches and prepare analysis and manage and review outside counsel product clearance searches and analysis. -Conduct mergers and acquisition IP due diligence as needed. -Assist in patent portfolio management including managing patent committee portfolio review meetings and building portfolios for a diverse group of business units. -Manage outside counsel through the preparation and prosecution of U.S. and foreign patent applications. -Conduct analysis relating to potential infringements of company patents. -Assist in managing several patent portfolio functions including the patent incentive program and the patent marking program. -Solicit invention disclosures to support portfolio development for several engineering departments.

Requirements

• j.d.
• bar membership
• uspto admission
• power bi
• project management
• patent law

What You Bring

-Bachelor’s Degree or higher in electrical or mechanical engineering preferred -J.D. degree and membership in good standing in one state bar is required. -Experience or interest in trade secret, copyright and/or trademark counseling a plus. -Effective communicator, with the ability to establish and maintain effective relationships with clients, coworkers, and colleagues. -Experience in managing intellectual property litigation a plus. -Ability to travel up to 20%. -Prior in-house experience a plus. -Experience with PATTSY, Innography, and/or CPA/MDC Annuity Service a plus. -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. -Minimum 3-5 years of experience in the area of patent law. -Proficiency in Microsoft Power BI, PowerPoint and Excel a plus. -Admission to practice before the U.S. Patent and Trademark Office required -Ability to work autonomously, issue spot and provide incisive, practical and business-focused advice and counsel. -Connecticut bar or ability to obtain Connecticut in-house counsel certification required

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About Hubbell Incorporated

-Products span from high-voltage grid components to connectors, lighting fixtures, wiring devices, and data-center infrastructure. -It serves markets ranging from utilities and renewables to commercial construction, healthcare, OEMs, telecom, and residential. -Notable projects include equipping smart grids, powering hospitals, wiring data centers, and supporting wind and solar farms. -It traces its roots through a century of innovation, adding major acquisitions like Ohio Brass, Burndy, Aclara to its legacy. -An unusual fact: its founder’s 1900s patent for a paper-roll cutter shaped its early success and led to today’s broad industrial reach. -Headquartered in Shelton, CT, it maintains a storied heritage in electrification.

Sector Specialisms