Assistant General Counsel VP, Intellectual Property (Chief IP Counsel)
POSITION OVERVIEWAssistant General Counsel VP, Intellectual Property (Chief IP Counsel) reports to theGeneral Counsel has primary, global responsibility for the development, protection, enforcement, and strategic use of the Company’s intellectual property assets, including patents, trademarks, trade secrets, and related IP rights worldwide.This role providesstrategic legal counsel to senior leadership, leads the global IP function, manages an attorneyand a patent agent, patentcoordinators, IP paralegals and a law/billing clerk. The role is responsible for managing external IP professionals and related budgets globally, including budgets for filing/prosecution, maintenance/renewals, and oppositions/conflicts.PRIMARY DUTIESThis individual will be involved in a variety of strategic, advisory, managerial, andoperational intellectual property functions which support all global business units, with a focus on protecting our differentiated premium products to support the Company's growth.LEAD GLOBAL INTELLECTUAL PROPERTY STRATEGY AND GOVERNANCE (45-55%)Define and implement a global IP strategy aligned with business objectives; oversee policies, processes, and standards for IP creation, protection, and use.Develop and manage an in-house IP Team of expertsProactively provide business unit reviews for patents, trade secrets, and trademarks to effectively manage spending while optimizing valueMaintain trade secret and formula security policyMaintain ongoing client-tailored training globally for patents, trademarks, and trade secretsProvide legal advice on IP risks and opportunities with a deep understanding of chemistry and of business strategy, including but not limited to providing non-infringement and invalidity assessmentsCounsel on and implement IP holding structure and intercompany licenses globallyDRAFT AND NEGOTIATE IP-RELATED AGREEMENTS (20–30%)Lead on Licenses and Joint Development AgreementsAssist non-IP lawyers with IP clauses in supply, contract, manufacturing, or other commercial agreements to protect and leverage Company IP while mitigating risks of IP infringement.MANAGE IP-RELATED CONFLICTS/LITIGATION GLOBALLY (10–20%)Select and manage outside counsel, remaining intimately involved to guide executive leaders in decision-making and to set and manage strategy for any litigation.SUPPORT M&A IP DUE DILIGENCE AND INTEGRATION (10–20%)Customize IP due diligence strategies and consult on deal risk mitigation approachesSet integration strategy, ensuring clients understand all acquired IPEMPLOYEESSUPERVISEDDirect reports: Patent/IP Counsel, Patent Agent, Trademark Paralegal, and Law Clerk. Indirect reports: Patent Paralegals and Patent CoordinatorsBUDGETARYRESPONSIBILITYResponsible for setting and managing budgets related to patent and trademark filings, prosecution, and maintenance costs. This role has significant influence over outsidecounsel selection/use/spend and portfolio investment decisions. This role also manages outside counsel spend related to outsourced IP transactional and litigation matters.Minimum RequirementsFor US candidates, Juris Doctor (J.D.) plus patent bar/licensed in the USPTO. For candidates in Germany or Portugal, they must be a licensed Patent Attorney capable of filing and prosecuting patents in the EPO. All candidates must have a Bachelor’s degree or greater (or equivalent experience) in Chemistry or Chemical EngineeringMinimum 15+ years of progressive legal experience in intellectual property law, including significant in-house experienceDemonstrated expertise in patents, trademarks, IP transactions, and IP risk management in a global business environmentFluent in EnglishActive membership in good standing with at least one U.S. state bar (or equivalent jurisdiction), or in Germany or PortugalStrong leadership, communication, judgment, and strategic decision-making skillsStandard office physical requirementsDemonstrates proficiency in the following competencies:Innovation – Leveraging possibility thinking in creating new value for customersAccountability – Delivering excellence through personal motivation and engagementPerformance Excellence – Elevating the performance bar and delivering on commitments with high-quality solutionsChange and Risk Taking – Working toward our future, altering the course as needed, and balancing risks and rewards in making decisionsCustomer Focus – Understanding customer needs and delivering superior solutions with passionTeamwork – Encouraging collaboration, trust, and cooperation among and within work groupsClick on the link to learn more about H.B. Fuller’s CompetenciesPREFERRED QUALIFICATIONSExperience managing global patent portfolios and coordinating IP strategy across multiple jurisdictions.Experience managing IP in emerging marketsExperience managing and developing people.Adhesive chemistry acumenDemonstrated Business PartnerExperience advising executive leadership and Boards on IP strategy, M&A, and riskPHYSICAL ENVIRONMENTPrimarily office-based;Minimal lifting requirementsRepetitive keyboard and screen useNo unusual substance exposureProfessional office environmentOccasional domestic and international travel