What are the responsibilities and job description for the Intellectual Property Counsel position at Indicor, LLC?
About Indicor
Indicor is a global, $1 billion diversified industrial solutions company providing specialized, mission-critical products for industrial manufacturers, and a global portfolio of proven, best-in-class industrial technology companies. The Indicor family of companies boasts decades of experience producing dependable, highly engineered solutions, delivering performance and value across a wide spectrum of markets.
Indicor was formed when Clayton, Dubilier & Rice LLC (CD&R), a preeminent private equity firm, acquired a controlling stake in Roper Technologies' specialized industrial businesses in November 2022.
Indicor's footprint spans 30 countries worldwide, illustrating our commitment to global expansion and market leadership. The success of our operations is deeply rooted in our diverse and dedicated workforce, comprising approximately 3,000 employees who contribute to our continuous growth and innovation. At Indicor, we strive to create an empowering environment for our employees, fostering opportunities for personal growth and professional development.
We are seeking a highly motivated and experienced Counsel, Intellectual Property to join our dynamic legal team based in Charlotte, North Carolina. The successful candidate will play a key role in managing and protecting Indicor’s global intellectual property portfolio, including patents and trademarks for niche, highly-engineered products across diverse technologies. The role of Counsel, Intellectual Property will report to Indicor’s General Counsel, and will advise on all aspects of intellectual property law, supporting business operations, collaborating with internal and external stakeholders to mitigate risks and maximize IP opportunities, and perform other duties as needed or requested by the executive team.
Key Responsibilities:
- Trademark and Brand Protection:
- Oversee Indicor’s trademark portfolio, including filing and prosecuting new trademarks, monitoring for infringement, and renewing registrations.
- Conduct trademark clearance searches and provide strategic advice on the registration and protection of trademarks in key markets.
- Manage trademark opposition and cancellation proceedings, both in the U.S. and internationally.
- Work with outside counsel to draft, file, and prosecute international trademark applications in line with Indicor’s strategic objectives.
- Develop and implement global brand protection strategies.
- Patent Management:
- Work with outside counsel to draft, file, and prosecute patent applications (both domestic and international) in line with Indicor’s strategic objectives.
- Manage the maintenance and enforcement of existing patents, including overseeing patent renewals, maintenance fees, and assist with handling disputes or challenges.
- Collaborate with business colleagues to identify and protect new innovations.
- Legal Counseling:
- Advise internal clients on IP-related matters, including risks, opportunities, and strategies.
- Provide IP training to employees to ensure company-wide compliance with IP policies and best practices.
- Contract and Licensing:
- Draft, review, and negotiate IP-related agreements, including licensing agreements.
- Support due diligence in corporate matters involving IP assets, such as M&A transactions.
- Dispute Resolution:
- Manage IP litigation, disputes, and enforcement actions, coordinating with external counsel as necessary.
- Handle cease-and-desist letters, infringement claims, and other enforcement actions in defense of Indicor’s IP rights.
- Compliance and Risk Management:
- Ensure compliance with intellectual property laws and regulations in all jurisdictions where Indicor and its businesses operate.
- Monitor and assess changes in IP law, advising Indicor on potential impacts to its IP strategy.
Qualifications:
- Juris Doctor (required) with 5-7 years’ experience, preferably in both law firm and in-house settings.
- Licensed in at least one state in the U.S. (required).
- Licensed to practice before the U.S. Patent and Trademark Office (USPTO).
- Strong understanding of U.S. and international intellectual property laws and regulations.
- Demonstrated experience managing global patent and trademark portfolios.
- Excellent drafting, negotiation, and communication skills.
- Ability to work collegially, collaboratively with cross-functional teams in a fast-paced environment.
- Strong attention to detail and problem-solving skills.
Preferred Qualifications:
- Experience in the industrial and/or manufacturing sectors.