Associate General Counsel – Licensing

Job description

3385810
Additional Cities

Niskayuna
Career Level

Experienced
Relocation Assistance

Yes
Business

GE Corporate
Business Segment

Corporate Business Development
Function

Legal
Country/Territory

United States
Additional States/Provinces

New York
Postal Code

12309-1027
Role Summary/Purpose

Reporting to the President of GE Licensing, the role will provide direct counsel for legal matters relative to technology IP, patent pools, portfolio management, and collaborative relationships. The role will serve as a legal advisor to the Structured Product’s team.
Essential Responsibilities

Manage and co-ordinate a team of legal professionals to support the execution and litigation of complex commercial licensing transactions. An IP strategy expert with deep, hands-on experience advising transaction leaders on legal matters in real time commercial discussions with third parties. Be committed to mentoring across teams, forging strong relationships internally and externally, as well as passionate about team work and exploring creative business models to innovate and maximize GE’s Intellectual Property value. 

·  Act as chief advisor to the President of GE Licensing for the Structured Product’s team, providing objective, comprehensive representation and options for legal matters related to Licensing structure, enforcement, obligations and risks
·  Spearhead legal aspects of the Company’s Structured Products team, including assertion, commercial transactions, regulatory issues, litigation and intellectual property
·  Provide broader connectivity to GE’s Business legal communities as needed, negotiating and representing GE Licensing’s interests as it relates to transactions or policies
·  Secure and manage proper use of outside counsel and experts as required to complement internal commercial activities
·  Develop litigation strategy, seek consensus and approvals as needed to execute and oversee to final settlement.
·  Utilize prior experience to structure, draft and negotiate IP & IP-anchored agreements, including but not limited to IP licenses, JDAs, JVs, patent pool and standards agreements, in areas as diverse as video compression, mechanical/electrical hardware and consumer goods
·  Legal advisor to commercial lead on litigating strategies, FRAND obligations, injunctions, cross border enforcement, invalidity and infringement of Standard Essential and other patents in various global jurisdictions. Current on legal matters and strategies in key jurisdictions such as Germany, United States, England, China, Japan, Korea and India, particularly for SEP patents
·  Provide legal support for technology transfer, joint development, and IP licensing programs, including identifying relevant IP portfolios, developing IP and technology programs, asserting IP, negotiating transactions, drafting IP or technology licenses, and facilitating IP sales, acquisitions, and investments
·  Review patents and file histories and prepare litigation-grade claim charts
·  Strategically develop, deploy and manage IP portfolios, particularly SEP portfolios
·  Stay up-to-date with latest changes in US and global patent law and educate the senior leadership team on how such changes impact current and future licensing activities.
·  Provide other general legal advice and guidance as required

Qualifications/Requirements

·  Juris Doctor from an accredited college or university and membership in good standing in at least one U.S. state (or D.C.) bar association
·  Bachelor's degree from an accredited college or university in electrical/communications/electronics engineering, physics or other related field
·  Registered with the USPTO
·  Minimum of 10 years of patent litigation and/or licensing experience in industrial technical areas and markets including experience in drafting technology transfer and patent licensing agreements
·  Ability to travel internationally up to 50%

Desired Characteristics

·  Understanding of video and audio communication standards (H.262-H.266, AV1, etc) and related pool transactions
·  Expertise in commercial transactions and/or mergers and acquisitions, specifically on behalf of technology companies
·  Extensive experience on transaction teams as legal advisor for complex and creative business models anchored in intellectual property
·  Experience handling complex business & IP transactions, and developing and presenting appropriate IP solutions. Strong business acumen required, enabling the integration of global legal, technical and business issues into a final recommendation
·  Experience in transactions creating new companies, and in IP engagements with an established global conglomerate
·  Experience in IP litigation, patent pool formation, patent prosecution, patent assertions, global technology transfers, IP acquisition and sale, IP portfolio strategy, offensive and defensive IP strategy, and full patent lifecycle experience (from inventive concept + prep/pros, foreign filing/PPH strategy, through post grant review, possible ITC engagement and end of life considerations)
·  Working knowledge of patent, copyright, trademark, trade secret and other intellectual property law
·  Experience in international law and international business transactions
·  Ability to manage multiple projects in a fast-paced, hands-on, ambiguous environment
·  Strong substantive expertise, sharp intellect, and experience in forging proactive, pragmatic and imaginative legal solutions that will advance business goals
·  Outstanding commercial business acumen across a broad array of technologies
·  Both strategic and hands on execution excellence
·  Compelling communication (in oral and written form) at all levels internally and externally at the C-suite level for $50M+ transactions
·  Prioritization, perspective and focus on critical tasks that add value
·  Hands-on, proactive and engaged leadership skills
·  Exceptional judgment and the ability to engender immediate trust
·  Unquestioned integrity, gravitas and stature
·  Ability to navigate ambiguity and work with minimal supervision
·  Demonstrate clear thinking and prepare appropriate options even in new or non-standard business models or new geographies

About Us

GE (NYSE:GE) drives the world forward by tackling its biggest challenges. By combining world-class engineering with software and analytics, GE helps the world work more efficiently, reliably, and safely. GE people are global, diverse and dedicated, operating with the highest integrity and passion to fulfill GE’s mission and deliver for our customers. www.ge.com
AtGE , developing people is embedded in our culture and integral
to our growth. Developing people is how we have succeeded across industries and around the world. It’s how we’ve
sustained a 130-year record of innovation and reputation for leadership. It’s how we solve the toughest challenges for
our customers and society. Developing people allows us the build, power, move and cure. It prepares us all for the
future. Today, that is as important as ever. Globalization and technology are converging with unprecedented speed
to reshape every job, workplace and industry. Our commitment to developing people starts with a belief that
education systems must align early and always with the changing requirements of the new economy. It continues
with the understanding that employers and educational institutions must collaborate over skills development,
enabling people to learn new, relevant skills and work smarter over the entire course of a career. And it creates
global leaders, people who can navigate the complexity of our times with clarity, courage and integrity. Developing
people is commitment that doesn’t just make us better; it makes everyone better. Let GE invest in helping you grow
both personally and professionally.
GE offers a great work environment, professional development, challenging careers, and competitive compensation. GE is anEqual Opportunity Employer . Employment decisions are made without regard to race, color, religion, national or ethnic origin, gender (including pregnancy), sexual orientation, gender identity or expression, age, disability, veteran status or any other characteristics protected by law.
Additional Eligibility Qualifications

GE will only employ those who are legally authorized to work in the United States for this opening. Any offer of employment is conditioned upon the successful completion of a drug screen (as applicable).
Primary Country

United States
Primary State/Province

New York
Primary City

Niskayuna