Cummins Inc.

Corporate Counsel - Intellectual Property (Hybrid)

Posted on: 25 Jan 2022

Nashville, TN

Job Description

We are looking for a talented IP Corporate Counsel to join our team specializing in IP legal matters for our Filtration business headquartered in Nashville, TN. This is an exciting opportunity that can be based in Nashville, Tennessee with offsite working as an option for the right candidate.

Cummins Filtration is a global power leader that designs, manufactures, and sells air, fuel, hydraulic and lube filtration, as well as chemical technology products for diesel and gas-powered equipment around the world. As Corporate IP Counsel, you will provide legal advice on patent, copyright, and trademark matters, including evaluating patents and potential product infringement issues, preparing, and overseeing outside counsel's preparation of patent and trademark applications for filing, and representing the company in matters relating to intellectual property that include strategic alliances, joint ventures, development and licensing, R&D and technology transfer, and mergers and acquisitions.

In this role, you will make an impact in the following ways:

Develop and manage a global legal framework for the protection of Company’s intellectual property portfolio, including patents, trademarks, copyrights and trade secrets.

Manage patent and trademark prosecution and internal patenting committees

Provide practical legal advice regarding intellectual property and global portfolio management that furthers business strategies/objectives.

Assist with intellectual property due diligence in mergers and acquisitions and other strategic initiatives that involve the Company’s intellectual property.

Support the R&D organization, including client counseling, invention harvesting, freedom-to-operate analysis, due diligence analysis and reporting, and helping to identify non-patent legal or business risks.

Exposure to and support major areas of the business including information technology, commercial, sales and marketing groups, corporate strategy, manufacturing, and supply chain.

Support U.S. and non-U.S. litigation, oppositions, IP Rights, or other judicial and non-judicial proceedings around the world.

Provide transactional support for intellectual property and information technology agreements, including joint development agreements, patent/trademark/copyright licenses, software and other IP agreements.

Provides support and leadership in improvement and issue-resolution projects in both the Legal function and within the business unit.

Providing mentorship in support of patent prosecution to patenting committee members.

To be successful in this role you will need the following:

A minimum of 5 years of relevant intellectual property experience, including global and domestic patent prosecution; developing patent strategies, conducting patent analysis, and global IP portfolio management in a law firm, government, in-house or a combination;

IP litigation and M&A experience highly preferred but not required.

Influencing - encourages others to change their mindset and/or behaviors to achieve positive results. Presents convincing justification for others to accept ideas and plans. Encourages the open expression of opinions and disagreements. Effectively gains commitment with others to produce high quality work.

Analytical Reasoning - The ability to evaluate and analyze data and information, draw conclusions, and present an argument based upon the analysis. The use of critical thinking, analytical reasoning, and problem-solving skills are critical to analytical reasoning.

Conflict Management - deals with conflict in a way that recognizes and manages differing opinions and ideas and refocuses them in a positive and productive manner. Brings conflict and disagreement into the open and attempts to offer a fair resolution collaboratively while maintaining a constructive working relationship.

Relationship Management - develops rapport, builds trust, and creates value in relationships. Identifies networking opportunities and effectively communicates across functions, business units and with both internal and external business partners

Situational adaptability - Adapting approach and demeanor in real time to match the shifting demands of different situations.

Education/Experience

B.S. in materials science, chemical engineering, chemistry, physics, mechanical engineering, electrical engineering or similar field.

Juris doctor degree from an accredited law school.

Professional license to practice law in one state.

Admitted to practice in front of the U.S. Patent and Trademark Office (Patent bar admission).

Compensation and Benefits

Base salary rate commensurate with experience. Additional benefits vary between locations and include options such as our 401(k) Retirement Savings Plan, Cash Balance Pension Plan, Medical/Dental/Life Insurance, Health Savings Account, Domestic Partners Coverage and a full complement of personal and professional benefits.

Cummins Inc.

Columbus, IN

Cummins Inc. designs, manufactures, distributes, and services diesel and natural gas engines, and powertrain-related component products worldwide. It operates in five segments: Engine, Distribution, Components, Power Systems, and Electrified Power. The Engine segment manufactures and markets a range of diesel and natural gas powered engines under the Cummins and other customer brands for the heavy-and medium-duty truck, bus, recreational vehicle, light-duty automotive, construction, mining, marine, rail, oil and gas, defense, and agricultural markets. It also offers new parts and services, as well as remanufactured parts and engines.

The Distribution segment distributes parts, engines, and power generation products; and provides service solutions, such as maintenance contracts, engineering services, and integrated products. The Components segment offers emission solutions; and turbochargers for light-duty, mid-range, heavy-duty, and high-horsepower diesel markets. It also provides air and fuel filters, fuel water separators, lube and hydraulic filters, coolants, fuel additives, and other filtration systems; and fuel systems for heavy-duty on-highway diesel engine applications, as well as remanufactures fuel systems.

The Power Systems segment offers back-up and prime power generators, controls, paralleling systems, and transfer switches, as well as A/C generator/alternator products under the Stamford, AVK, and Markon brands. The Electrified Power segment provides electric and hybrid powertrain systems; and battery modules, packs, and systems for commercial, industrial, and material handling applications. The company sells its products to original equipment manufacturers, dealers/distributors, and end users. The company was formerly known as Cummins Engine Company and changed its name to Cummins Inc. in 2001. Cummins Inc. was founded in 1919 and is headquartered in Columbus, Indiana.

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