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IDEX Assistant General Counsel, Intellectual Property in Northbrook, Illinois

If you’re looking for a special place to build or grow your career, you’ve found it. Whether you’re an experienced professional, a recent college graduate or somewhere in between, IDEX is a place where you can apply your existing skills and learn new ones in an environment where you can make an impact.

With interesting opportunities in engineering, marketing, sales, supply chain, operations, HR, finance, and more across more than 40 diverse businesses (https://www.idexcorp.com/our-businesses/business-segments/) around the globe, chances are, we have something special for you.

POSITION SUMMARY:

The Assistant General Counsel will be responsible for (i) providing legal advice and assistance to IDEX and its Business Units worldwide on Intellectual Property matters, (ii) managing threatened or pending IP disputes and potential litigation, and (iii) managing a global IP portfolio. The role will require interfacing with manufacturing facilities, operations and business personnel at all levels, including senior management. IDEX is a global company with Business Units and outside service providers worldwide. This position involves working closely with third party service providers, including the effective management of outside counsel globally.

DUTIES AND RESPONSIBILITIES:

This role focuses on managing our Intellectual Property portfolio and advising our global businesses on questions related to IP. By joining this team, you will work with colleagues across the IDEX Business Units on everything from joint development agreements to offering effective strategies for challenges faced in protecting IP. You will assess the risks, evaluate effects, and propose solutions that have a positive impact on our business.

In this role, you will be responsible for:

  • Providing guidance, support and training to our Business Unit’s research, development and engineering teams, and managing IP matters and challenges that pertain to product development, innovation and trade channels.

  • Providing guidance and advise to our Business Units on patent matters including filing strategies, budget considerations, and patent portfolio maintenance decisions.

  • Providing guidance and advice to our Business Units on confidentiality and trade secret protocols.

  • Liaising with our Business Units to ensure consistency in approach and alignment with global IP strategy.

  • Reviewing, drafting, and negotiating contractual agreements, including joint development agreements, license agreements, co-existence agreements, intercompany agreements, material transfer agreements, and non-disclosure agreements and providing advice and support on IP provisions on a wide range of contracts.

  • Leading Legal oversight and management of the Company’s licensing strategy and relationships.

  • Conducting and reviewing worldwide trademark clearance searches and providing recommendations and advice to marketing and creative teams regarding infringement risks, registrability and risk mitigation strategies.

  • Effectively and efficiently manage the prosecution of our worldwide trademark portfolio in-house, including determining filing strategy, all application prosecution, managing filing with non-U.S. counsel and assisting a third party provider to manage renewals worldwide.

  • Managing trademark enforcement in-house including drafting and sending cease and desist letters, litigating opposition and cancellation matters at the TTAB, negotiating settlements, and overseeing outside non-U.S. counsel on these matters, as needed.

  • Providing legal guidance to management concerning trademark, copyright and trade dress strategy, licensing, and disputes, including counterfeiting issues.

  • Reviewing and advising on advertising and branding materials and packaging, and providing advice and guidance with respect to IP use and risks.

  • Creating and implementing processes, guidelines, and trainings related to IP matters to promote efficiency and compliance.

  • Partnering with marketing, Information Technology, and Global teams to protect domain names including negotiating acquisition of potentially infringing domains, managing Uniform Domain-Name Dispute Resolution proceedings and litigation.

  • Providing IP litigation support to outside counsel as necessary .

TECHNICAL SKILLS AND QUALIFICATIONS:

  • Broad-based knowledge of IP principles, with strong contract drafting and negotiating skills.

  • Experience handling complicated commercial and business transactions, both domestic and international.

  • Project management experience, with a demonstrated ability to prioritize tasks and to manage multi-task, multi-deadline, cross functional projects effectively, on time and on budget.

  • Proven ability to identify and mitigate risks and balance legal risks with business goals.

  • Excellent verbal and written communication skills and the poise and personality to effectively communicate and interact with executives and personnel at all levels.

  • Ability to influence major decisions balancing legal and IP reasoned analysis and business understanding.

  • Highly-motivated, proactive self-starter with excellent judgment and professional maturity.

  • Ability to fit into a team-oriented environment that is both friendly and informal, yet demanding of excellence, fast-paced and rapidly changing.

  • Ability to actively manage and work efficiently with outside counsel.

  • Willingness to travel.

EDUCATION AND EXPERIENCE:

  • J.D. from an ABA-accredited law school.

  • Licensed to practice law in at least one state and in good standing with all state bars where admitted.If not admitted in Illinois, must successfully apply for in-house counsel licensure with the State Bar of Illinois.

  • 15 or more years of legal practice, with a preference for some experience in a relevant in-house position.

Are you ready to join a different kind of company where our people, our culture, and our commitments are centered around providing trusted solutions that improve lives around the world?

IDEX is an Equal Opportunity Employer and Affirmative Action Employer. IDEX gives consideration for employment to qualified applicants without regard to race, color, religion, creed, genetic information, sex, sexual orientation, gender identity or expression, marital status, age, national origin, disability, protected veteran status, or any other consideration or protected category made unlawful by federal, state or local laws (Minorities/Females/Protected Veterans/Disabled).

Attention Applicants: If you are an individual with a disability and require a reasonable accommodation to complete any part of the application process, please let us know. Likewise, if you are limited in the ability to access or use this online application process and need an alternative method for applying, we will determine an alternate way for you to apply. Please contact our Talent Acquisition Team at lfcareers@idexcorp.com for assistance with an accommodation. These contact tools may be used only by individuals with a disability for accommodation requests. Do not inquire as to the status of an application.

Job Family: Legal

Business Unit: Corporate

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