Counsel - Intellectual Property

Unspecified, Illinois
03 Oct 2016
29 Oct 2016
Oil and Gas
Contract Type
Full Time
In this role, the Counsel - Intellectual Proper will be an IP professional who will provide a full range of intellectual property services to the Distributed Power (DP) business and the Ultra-filtration / Membrane Bioreactor (UF/MBR) business within Engineered Systems business, both of which fall within the Water & Distributed Power unit of GE Power.

Essential Responsibilities

The role will include being a strategic partner to the business, managing and strategic planning of patent portfolios, advising clients on a broad range of patent, trademark, copyright, and trade secret matters, conducting patent clearances, managing outside counsel in the preparation and prosecution of patent applications as well as supporting the businesses in all IP related transactions.

As the Counsel - Intellectual Property, you will:

  • Lead the strategic approach to IP for the DP and UF / MBR businesses
  • Provide counsel and advise clients on a broad range of various domestic and international intellectual property issues across businesses
  • Manage patent portfolios that facilitate growth
  • Prepare and negotiate intellectual property related agreements and support other agreements from the intellectual property perspective
  • Assist with patent evaluation screening and review boards and develop appropriate business-wide procedures to harvest, protect and defend intellectual property
  • Provide from time to time, IP training to the business, including subjects on patents, copyrights, trade secrets and related matters
  • Work with the HR, Engineering and IT teams to make sure that our practices, processes and procedures are adequate to protect the physical and electronic IP the business has generated
  • Assist with proactive reviews of technical papers and other marketing material for appropriate use of intellectual property content
  • Proactively coordinate and implement GE corporate-wide and business-wide IP initiatives


  • Bachelor's Degree in Mechanical Engineering
  • Juris Doctorate from an accredited law school
  • Minimum of 5 years of active practice in the intellectual property field, including experience in preparation and prosecution of patent applications either in the US or Europe, managing the preparation and prosecution of patent applications by other attorneys, evaluating and preparing patent opinions, dealing with and advising managers and individual contributors with respect to intellectual property matters, at the international level, preparing and negotiating proprietary information agreements and other intellectual property related contracts such as licensing and technology transfer agreements, evaluating and advising on intellectual property disputes, managing international intellectual property matters and working with general lawyers in solving mixed intellectual property / general legal problems
  • Admission to a legal bar in the US
  • Admitted to practice before the U.S. Patent and Trademark Office

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 background investigation and drug screen.

Desired Characteristics

  • Member in good standing with a State Bar
  • Master's Degree in Mechanical Engineering
  • Sound judgment in developing and implementing legal solutions
  • Strong oral and written communication skills
  • Excellent interpersonal and leadership skills
  • Able to work effectively with all levels of the organization
  • Demonstrated ability to develop process-driven solutions to issues
  • Capable of handling multiple priorities in a time pressured environment
  • Established analytical ability
  • Strong commitment to integrity and professionalism
  • A superior academic record and work history that affirmatively demonstrates leadership and ability to push others to deliver on commitments
  • Substantial experience with and ability to use legal related technology
  • Experience in trade secret, intellectual property, trademark, copyright, unfair competition matters
  • It is also highly desirable that applicants have experience and familiarity within the reciprocating engine and water filtration businesses and related technologies

PLEASE NOTE: Cleveland, OH; Waukesha, WI; Chicago, IL are the preferred locations, however, other U.S. locations may be considered.

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