IP Manager, Attorney

Role Summary

This position will oversee MANN+HUMMEL’s intellectual property matters in the Americas with focus on the US, including patent prosecution, IP litigation, IP related transactions, and enforcement. The role involves collaborating with regional and global R&D teams, outside counsel, international IP colleagues and business units to ensure the company’s innovations and interests are adequately protected and aligned with business objectives.

Main Tasks

• Be the first point of contact (Senior Counsel: Be the lead IP counsel) for all IP topics in the Americas for your regional colleagues in R&D, Marketing, Sales, Business Legal, Corporate Ventures and advise on IP related strategies and risk management.
• Collaborate with all stakeholders, consult in all IP legal subject matter and align closely with your peers in the global IP team to drive support of the Group’s IP interests in the Americas.
• Conduct freedom-to-operate analyses, infringement assessments on 3rd party products and patentability evaluations.
• Engage directly with engineering and R&D teams to identify, harvest, evaluate, and prioritize new inventions. Manage patent drafting, filing and prosecution with focus on cases originating out of your region. Review patent applications for quality and strategic alignment. Hands on filing & prosecution at the USPTO is welcome.
• Work with the sales and marketing teams to register, enforce, and protect the global MANN+HUMMEL brands like WIX, FILTRON, and PUROLATOR 
• Manage regional enforcement activities and IP disputes, including cease-and-desist actions, in close collaboration with both regional business colleagues and the global IP team. Coordinate pre-litigation and litigation strategy for IP cases with outside counsel.
• Provide IP guidance in transactional matters; review, draft, and negotiate JDAs, NDAs, licensing agreements and collaboration contracts involving IP rights, in close collaboration with regional Business Legal colleagues in the US and BR.
• Supervise outside counsel and collaborate with fellow IP Counsel in the global and local IP Team
• Monitor development of the IP legal environment of your region and contribute to regular updates of IP strategies
• Lead or contribute to internal projects and be flexible in managing diverse IP tasks in a fast paced, transforming environment
• Provide training

Skills

Minimum Educational Requirement

Your Profile

Education:

• Juris Doctor (JD) degree from an accredited US law school.
• Admission to a state bar.
• USPTO registration required.

Experience:

• Technology background in mechanics or chemistry preferred.
• 5+ years of IP experience in a law firm or in-house legal department, with a focus on patents, trademarks, and IP litigation.
• Strong understanding of US patent laws, USPTO procedures, IP litigation strategies, and international aspects of IP law.
• Experience working with engineering and commercial teams, particularly in manufacturing industries or automotive.

Skills:

• Proven ability to manage outside counsel and legal budgets.
• Excellent analytical, and communication skills.
• Ability to explain IP legal topics to different audiences from engineers to senior management
• A cooperative, team oriented mindset, self-sufficient and able to work independently