Associate General Counsel-IP (TN, IL, NJ)

Job description

A mutually rewarding experience.

Work. Realize your ambitions. And realize there's more to being in business than just making a profit. That's the Mars philosophy. And the opportunity we offer every one of our Associates. An opportunity to take what you do and make it mean more for you, for those around you and for the planet. What you get here is challenging, interesting work. You get the tools you need to do a great job and you get to have the best possible people on your side to help you do it. And at the same time as getting to find ways to do business better today than we did it yesterday and driving a great career, you also get to build a more enlightened business and drive sustainability.

Because it's never just about a single person, a single project or a single brand. It's about how you can grab everything that's within your reach here and use it to pursue mutual, long-term gain. It's about having ideas. And ideals. Being prepared to risk failure because the promise of success means we'll all be a little better off. It's that mix of integrity and ambition that makes Mars such a special place to work. And why working here is always about more than just a job.

About Mars, Incorporated

Mars is a family-owned business with more than a century of history making diverse products and offering services for people and the pets people love. With almost $35 billion in sales, the company is a global business that produces some of the world's best-loved brands: M&M's®, SNICKERS®, TWIX®, MILKY WAY®, DOVE®, PEDIGREE®, ROYAL CANIN®, WHISKAS®, EXTRA®, ORBIT®, 5™, SKITTLES®, UNCLE BEN'S®, MARS DRINKS and COCOAVIA®. Mars also provides veterinary health services that include BANFIELD® Pet Hospitals, Blue Pearl®, VCA® and Pet Partners™. Headquartered in McLean, VA, Mars operates in more than 80 countries. The Mars Five Principles – Quality, Responsibility, Mutuality, Efficiency and Freedom – inspire its more than 100,000 Associates to create value for all its partners and deliver growth they are proud of every day.

Job Title

Associate General Counsel – IP- Patents & Technology Global Pet Care

Segment/Business Unit

Petcare

Function (e.g. P&O)

Legal

Family (e.g. Generalist)

IP-Patents & Technology

Job Level

P3 (People Leadership)

Location/Site

Nashville, TN / Chicago, IL / Mt. Olive, NJ

Line Manager’s Title

General Counsel, Pet Nutrition

Date

0

7

0

8

2

0

1

9

Job Purpose/Overview

To protect the Intellectual Property Assets created by the Global Pet Care Segment and ensure the freedom for all business unites in the Global Pet Care Segment to operate without infringing the Intellectual Property of others and be competitive in the marketplace.

Key Responsibilities

·  Strategic Leadership on and including the actual preparation and prosecution of the Pet Care Segment’s worldwide patent portfolio either internally or in cooperation with outside counsel
·  Protects and enforces the Segments’ patents; lead all patent opposition and related matters for the Segment globally; assist, and where assigned by the IP General Counsel, assume leadership for patent litigation.
·  Hire, supervise, train and evaluate the Segment’s patent lawyers, patent paralegals and support staff; implement an effective program to continue to motivate, mentor and retain members of the Segment’s IP team.
·  Ensure that the IP team provides necessary IP legal support, as appropriate, to the Segment’s Research & Development, commercial (procurement), technology, business development, supply, and sales and marketing teams.
·  Liaise with the Segment’s general counsel, legal leads for the Pet Health businesses, Kinship leadership, IP- Marketing Properties legal team, research and development teams, marketing and business associates to develop and implement a well-conceived strategy to optimize the Segments’ IP – Patent & Technology position, including evaluating the patent portfolios of competitors.
·  Counsels, negotiates and drafts Research Agreements with Universities, Consulting Agreements, Collaboration and pilot research Agreements, Non-Disclosure Agreements and related IP Agreements
·  Coordinate with Segment’s Marketing Properties team on overlapping issues to ensure continuity and robustness in the protection and management of the Segments’ IP.
·  Ensure proper pre-patent filing review; provide legal advice to the Segment’s management concerning the patentability of its inventions and the advisability of filing patent applications domestically and internationally.
·  Continually refine the portfolio mapping and life cycle management program for the Segment’s patent portfolio.
·  Liaise with Segment management to assess the IP implications of possible corporate, external partners including University alliances and transactions.
·  Work with patent counsel of strategic partners and collaborators to protect the intellectual property of the inventions created under the collaborations.
·  Generate and circulate competitive intelligence within and outside of the Segment to ensure awareness of and the appropriate response to competitor activities.
·  Provide IP due diligence support to other law department members in connection with technology investments and business acquisitions.
·  Set and manage the Segment’s patent budget and approve spend against the budget.

Context and Scope

The job gets done through:

·  proactive communication with the business partners;
·  reactive communication with the business partners;
·  receiving work from the Global General Counsel, the General Counsel – IP, the Segment General Counsel and other members of the Legal & Security Function; and
·  receiving communications from external sources such as external research partners, competitors, outside counsel, customers and various vendors to Mars.

The role operates by developing relationships with the assigned Segment and Units, understanding the business and its objectives and then providing proactive advice and training to the Segment and units, staying on top of the law and competitive landscape and advising the Company on same; advising the Company on IP aspects of all applicable Segment’s Agreements and related IP aspects of commercial matters, understanding the competitive landscape ensuring the Company the freedom to operate in businesses supported by this role and creating rights in and protecting the IP assets of business supported by this role.

Relevant Quantitative and Budget Information

Financial

NA

Staff

~6 direct reports

Other

Responsible for management of outside counsel and budget TBD for such after this role is filled

Job Specifications /Qualifications

1. Education & Professional Qualification

The successful candidate should hold a law degree from a well-regarded law school, be a full member of a state bar, and be admitted to practice before the United States Patent & Trademark Office. If not a member of the State bar in which the position is located then the successful attorney must take steps to gain admission by complying with the rules for that State in-house corporate counsel.

Mars strongly prefers that the successful candidate hold an undergraduate science degree in one of the following disciplines: chemistry, biology, chemical engineering, biochemistry, or food science. Candidates with degrees in mechanical engineering, electrical engineering, physics, or other scientific disciplines will be considered.

2. Knowledge/Experience

·  Minimum of 15 plus years as a practicing intellectual property lawyer; if an in-house lawyer, law firm experience earlier in career is preferred.
·  Significant experience in the preparation and prosecution of patents, including the development of IP portfolios relevant to the life cycle of products; significant experience providing clearance opinions; experience working on patent litigation is highly preferred; experience counseling management on litigation strategy and other litigation matters is preferred.
·  Possess an understanding of the corporate environment, and specifically the importance of the linkage between a company’s business objectives, research and development efforts, and its patent protection and enforcement efforts.
·  Experience leading and developing a team of attorneys and legal professionals
·  Exposure to global patent issues
·  Experience evaluating the patent portfolios of competitors and general understanding of the competitive landscape globally.
·  Experience working with outside counsel on validity opinions and patent litigation
·  Strong interpersonal and communication skills; ability to work well with and relate to company personnel at all corporate and scientific levels.
·  Demonstration of the ability to be sensitive to cultural issues arising from a global business that may impact a business or legal decision.

Mars is an equal opportunity employer and all qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability status, protected veteran status, or any other characteristic protected by law. If you need assistance or an accommodation during the application process because of a disability, it is available upon request. The company is pleased to provide such assistance, and no applicant will be penalized as a result of such a request.

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