Illinois Tool Works Inc. (NYSE: ITW) is a diversified manufacturer of advanced industrial technology and a Fortune 250 company with 110 years of history. The company designs and produces an array of highly engineered fasteners and components, equipment and consumable systems, and specialty products and equipment for customers around the world. Operating in 52 countries and employing more than 43,000 people globally, the business achieved revenues of $12.6 billion in 2020 alone, with roughly half coming from outside North American and 30% from the EMEA region, and a January 2021 market cap of $63B.
In 2013, the company began the process of scaling up its divisional operating structure by consolidating hundreds of business units into a number of more competitive global divisions. As a result of this initiative, the company’s operating divisions have an enhanced pool of resources to draw upon to accelerate organic growth as well as significant new opportunities to drive cost and productivity improvements by operating with a greater scale.
The ITW Corporate IP Legal Department seeks to recruit an Assistant Group Technology Counsel to be involved in and assume a broad range of legal responsibilities for a highly diversified portfolio of technologies related to ITW’s European businesses’ IP matters.
The position will be based at ITW’s Paris offices in the Haussmann area, which are the corporate centre for ITW in France. The wider IP team is based across the US and Germany and is part of the broader Corporate Legal function in ITW.
This position will afford the right candidate an excellent opportunity to participate in a diverse range of high-quality work, supporting all business units, with the responsibility of managing activities in France as well as involvement on a broader European basis.
The key responsibilities for the role will include, but are not limited to the following:
- Supporting intellectual property matters for ITW’s businesses in Europe, including patents, trade secrets, trademarks, copyrights, software, and domains.
- Advising leadership on questions related to IP portfolio development and administration, IP enforcement and defence, IP agreements, and IP risk mitigation involving third parties’ intellectual property rights.
- Support the management of a global patent and trademark portfolio based on a strategy developed with the assigned businesses, including overseeing outside counsels’ prosecution of patent and trademark applications.
- Work with assigned businesses, especially businesses in France in the French language, to identify, capture and protect all areas of intellectual property.
- Liaise with project teams to identify patentable inventions and draft patent applications covering inventions.
- Prosecute patent applications before the various European Patent Offices for ITW’s businesses.
Subject to SARS-CoV-2 pandemic travel restrictions, there will also be regular travel to meet the supervising Group Technology Counsel and various ITW businesses across Europe to maintain partnerships with and set up/support IP strategies for the business’ Innovation, R&D and Management teams. Further to this, there will be biannual travel to the ITW Corporate Office in Glenview, US.
The successful candidate is likely to fulfil the following profile:
- Qualification as national Patent attorney in France or Germany (the latter subject to native French language proficiency).
- Qualification as a European Patent Attorney.
- 10+ years of experience in Patent Law, in-house experience preferred; litigation experience desired.
- At least a Bachelor of Science (or equivalent) degree in General Engineering, Chemical Engineering, Electrical Engineering, Mechanical Engineering, or Physics.
- Exceptional verbal and written communication required, especially fluency in English and native French, in order to participate in detailed technical and legal discussions with French ITW businesses as well as patent text reviews / drafting for such French business units.
- Strong interest in incorporating business operational goals and objectives into day-to-day job activities.
- Demonstrable attention to detail.