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Job Summary:
We are seeking an Intellectual Property Attorney to join Brunswick's dynamic, client-focused legal team. Brunswick is an integrated recreational marine enterprise that includes Mercury Marine, Boston Whaler, Sea Ray, Attwood, and many other leading marine brands around the world.
The Counsel - Intellectual Property will work closely with the Chief Intellectual Property Counsel to support the IP needs of Brunswick's design, engineering, sales, and marketing teams. This will include creation and enforcement of patents, trademarks, copyrights, and contracts, in the U.S. and abroad.
This position will work with a broad range of marine-related technologies such as internal combustion engines, batteries, electric motors, mechanical and electrical propulsion systems, controls, vessel autonomy, connectivity, switching systems, materials, and product design.
Position can be located in our Fond du lac, WI, Menonomee Falls, WI, Lowell, MI, or Edgewater, FL office locations.
Key Responsibilities:
Strategic patent procurement: identify patentable inventions, organize invention disclosure review committees, perform novelty analyses and advise product development teams about patentability, establish prosecution strategy, supervise patent prosecution by outside counsel, manage patent portfolio Patent clearance: perform patent searches, create or obtain (from outside counsel) clearance analyses and opinions, direct design-around activities, advise product development teams Assist with managing Brunswick's trademark portfolio, including preparing and prosecuting U.S. trademark applications, responding to office actions, collecting and filing evidence of use, performing trademark clearance searches, advising marketing and business teams on proper trademark usage, managing outside foreign counsels for foreign trademarks Support offensive and defensive IP litigation; support IP enforcement actions including investigating infringement, issuing takedown demands, drafting demand letters, and interacting with outside legal counsel as needed Draft and negotiate IP License Agreements, Development Agreements, Confidentiality Agreements, Services Agreements Collect and create competitive intelligence and surveil competitor patent portfolios Perform M&A due diligence analyses Provide general intellectual property counseling Reports to:
Chief Intellectual Property Counsel
Qualifications and Skill Requirements:
JD degree Degree in electrical engineering, mechanical engineering, materials science, or other hard science with controls experience 4-6 years' experience practicing patent law in a law firm or corporate law department Licensed to practice law in Wisconsin, Illinois, or qualified to secure Illinois Limited House Counsel license USPTO patent bar registration is preferred but not required Patent litigation and licensing experience is preferred but not required Familiarity with trademark prosecution and enforcement Strong analytical skills, business acumen, and the ability to effectively merge the technical and commercial aspects of intellectual property Excellent judgement; ability to apply judgement independently and make effective decisions/recommendations Skilled in anticipating obstacles and developing innovative solutions in alignment with business strategy Self-motivated, willing to take on new challenges and able to learn and work well in a fast-paced, global environment Ability to manage a large number of complex projects successfully, and set priorities Clear, concise, effective communicator Demonstrated integrity, initiative, resilience Modest travel will be expected, post-COVID (~20% time)
