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Senior IP Counsel

  • GE Digital
  • Experienced
  • Posted 1/24/2017 4:17:24 PM
  • 2791619
  • Job Function: Legal
  • Business Segment: Digital Global Law & Policy
Location(s): United States ; California; San Ramon


About Us:
GE is the world’s Digital Industrial Company, transforming industry with software-defined machines and solutions that are connected, responsive and predictive. Through our people, leadership development, services, technology and scale, GE delivers better outcomes for global customers by speaking the language of industry.
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:
The IP Counsel will be an integral part of GE Digital’s world class legal team. This position offers the unique opportunity to shape our IP strategy in a startup-like growth environment with the backing and resources of a world-class company. The right candidate is eager for professional growth and for the opportunity to solve novel and cutting edge legal and business problems in the continually evolving IoT space.

Essential Responsibilities:

The ideal candidate has exposure to all substantive areas of IP law including litigation, patent and trademark prosecution, and licensing. Depending on skillset, the candidate will assist the IP team in numerous diverse tasks, including managing the company’s patent strategy, contributing to strategic transactions, brand management, marketing support, participation in standards setting and open source communities, trade secrecy management, litigation management and IP training.

We need the help of a high achiever with excellent substantive and time management skills who can manage multiple concurrent projects simultaneously and proactively drive tasks to completion. Communication skills are a must as the right candidate will be able to work well with multiple stakeholders of different background in a dynamic and matrixed environment. Sense of humor is crucial.

We will consider law firm attorneys with an IP litigation and counseling practice and in-house attorneys from software and high tech companies alike.

Key Responsibilities include:

  • Providing leadership and legal/risk mitigation advice to multi-functional teams on various intellectual property matters including all substantive areas of IP, licensing and commercial issues
  • Working with members of the IP legal, engineering and marketing teams to develop a substantial GE IP portfolio in the software technology area
  • Developing best practices around the protection and management of company trade secrets and other valuable and proprietary information
  • Assisting GE Digital’s open source leader on open source initiatives
  • Developing and managing an IP training program that will resonate for GE Digital’s Silicon Valley workforce
  • Assisting with the IP aspects of strategic transactions, including M&A transactions, that involve considerable monitoring and post-close monitoring and integration activities.
  • Drafting and negotiating various licensing, consulting and product agreements and contract transactions in the software technology area
  • Coordinating Digital strategy with other GE businesses
  • Leading and participating in various initiatives to improve the quality and efficiency of IP processes, including developing relevant metrics and data relating to the quality and effectiveness of IP processes and evangelizing the IP function.

    Qualifications/Requirements:

    Basic Qualification

  • A law degree from an accredited US Law School
  • Admission to at least one state bar or the D.C. bar
  • Minimum of 5 years of experience of practice on cutting edge IP issues at the highest level

    Eligibility Requirements

  • Any offer of employment is conditioned upon the successful completion of a background investigation and drug screen.

    Desired Characteristics:

  • Sense of humor and ability to relate across cross functional teams
  • Interest and background in the software industry
  • Membership in the California bar
  • USPTO admission
  • Patent portfolio management experience
  • IP litigation experience, including experience with the UTSA and copyright
  • Ability to work independently while checking in appropriately
  • History of participation and leadership in professional associations and bar activities
  • Excellent oral and written communication skills

    #DTR

    Locations: United States ; California; San Ramon

    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.

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