JOB DESCRIPTION:
Req ID: 82269
Company Description
Siemens AG is a global powerhouse in electronics and electrical engineering, and operates in the industry, energy and healthcare sectors. For more than 160 years, Siemens has built a reputation for leading-edge innovation and the quality of its products, services and solutions. With 428,000 employees in 190 countries, Siemens reported worldwide sales of $116.6 billion in fiscal 2008. With its U.S. corporate headquarters in New York City, Siemens in the USA reported sales of $22.4 billion and employs approximately 69,000 people throughout all 50 states and Puerto Rico. For more information on Siemens in the United States, visit www.usa.siemens.com.
Job Description
SUMMARY OF POSITION:
This is an individual contributing IP Attorney role for the Industry Sector providing independent IP legal advice and counsel mainly for the metals & mining, automation and motor drives businesses. The position will also support Siemens Corporation, Siemens U.S. Operating Companies, and Siemens AG in regard to intellectual property rights (e.g., patents, copyrights, trade secrets, trademarks).
ESSENTIAL JOB FUNCTIONS:
•Interface with clients
oCommunicate and interface with inventors, engineering managers, contracts and marketing personnel
o Independently provides extensive legal counseling, particularly in connection with IP-related agreements and patent investigations/product clearances
o Evaluate invention disclosures, provide IP legal training
o Organize and conduct patent committees
o Counsel regarding adoption and use of trademarks
• Additional counseling responsibilities
o Prepare, file and prosecute patent applications personally and via outside counsel
o Coordinate strategic patent portfolio development and asset management with Siemens IP Department colleagues in other countries
o IP aspects of corporate acquisition and divestiture transactions
o IP-related licensing and transactional agreements
o Patent and trademark claims assertions (including court litigation) management and support
REQUIREMENTS:
• 5+ years of IP legal experience in the metals & mining, automation and motor drives businesses required.
• Bachelors degree required in engineering, physics or technical area e.g., electrical or mechanical engineering, from an accredited school.
• Law school graduate (Juris doctor degree) from accredited school and admission to a state bar, active and in good standing
• Admitted to practice before USPTO required.
• Preparation of patent applications based upon original inventor disclosures and prosecution of such applications in USPTO.
• Experience in patent investigations and product clearances, including infringement and validity opinion drafting.
Beneficial:
• Preparation of IP-related agreements
• Understanding of trademarks and trademark law
• Litigation experience
• Prior experience in outside practice
