Deliver highly skilled patent procurement services. Oversee and handle the drafting and filing patent applications (domestic, foreign and PCT applications), liaising with inventors, internal IP lawyers, agents, staff, and foreign and domestic outside counsel to obtain the information needed to prepare and successfully prosecute patent applications.
Support global IP strategy that targets growth in key market segments and accelerates new product innovations in each key market around the world.
Provide a full spectrum of intellectual property legal services including: client counseling; technology development and licensing contracts; trade secret protection, and patent and trademark protection, surveillance, enforcement, licensing, and litigation.
Conduct patent novelty, validity and right to market studies, patent and information searches, and analyze and summarize search results.
Provide strategic guidance as a business partner to R&D, Marketing, and Procurement by integrating legal advice with critical business strategies for product development, joint development efforts, and licensing matters.
Train research and development and commercial personnel on IP best practices.
Provide IP related advice for M&A assessments and negotiations, joint ventures, and start-up investments.
Strong collaboration skills to engage and partner with colleagues in the global law department and global client teams.

A technical degree is required, preferably in Chemistry, Chemical Engineering, or Materials Science or Engineering, particularly polymer chemistry.
A law degree with excellent credentials, registration with the USPTO, and a member of the Bar in good standing is also required.
7+ years of patent law experience (at least 3 of those years must have been practicing in-house), including strong business counseling and strategy, transactions, patent drafting and prosecution, freedom to operate opinions, and litigation.
Experienced with various types of transactions (M&A, JV, licensing, JDA, partnering agreements, negotiation experience with universities).
Proven ability to deal effectively with complex legal issues that have both legal and business ramifications.
Strong communication and interpersonal skills, with demonstrated experience of collaboration and successfully engaging with global teams.
Demonstrated ability to lead and build relationships at a distance.
Demonstrated excellence in client counseling.
Highly experienced in technology relevant to Avery Dennison’s products, particularly polymers and adhesives.

IP Counsel

Key skills