Client: James Hardie
REF: 22990

James Hardie Industries is the world’s #1 producer and marketer of high-performance fiber cement and fiber gypsum building solutions. James Hardie believes that home is a sanctuary and a canvas for self-expression without compromise. As the trusted innovator and industry leader, James Hardie empowers homeowners and building professionals alike to achieve their dream home with premium quality solutions that enable endless possibilities for design and aesthetics, while also delivering trusted protection and long-lasting beauty. Key to this effort is the dedication to customers, market driven innovation, an inclusive and empowering company culture, and an unwavering commitment to a Zero Harm safety initiative.

The Opportunity

This is a unique opportunity to become part of James Hardie’s IP team based in Dublin, Ireland, with substantial impact on the company’s IP strategy and growing patent portfolio. Key accountabilities will include:

  • Assist with strategic planning related to Intellectual Property portfolio;
  • Draft, prosecute, and defend James Hardie (JH) patent applications and oversee the prosecution of foreign patent applications;
  • File and manage 3rd party patent oppositions and appeals and defend JH patents;
  • Develop and execute non-infringement/ invalidity strategies to secure freedom-to-operate for JH is all its core technology platforms;
  • Work closely with the Global IP Director to manage the patent docket, including filing, office actions, oppositions, appeals and other miscellaneous patent related matters;
  • Partner regularly with Research & Development (R&D) personnel to direct research towards appropriate open IP space;
  • Oversee work of IP Coordinators (monitoring third party patent activity and preparing search reports for R&D personnel and others in the business as needed);
  • Attend regular R&D, IP and IDF (Invention Disclosure Form) review meetings to gain a deep understanding of key technologies and developments; provide advice to company and R&D department regarding the best strategy for protecting the company’s intellectual property;
  • Work side-by-side with R&D personnel associated with discrete portions of the manufacturing process;
  • Understand the technical components of research projects, answer questions, and provide guidance regarding the relevant IP space implicated by each project;
  • Partner with R&D prepare and prosecute the patent for material that can be patented;
  • Offer guidance to R&D personnel and others in the company around trade secret protection;
  • Interact with outside entities, outside counsel, and clients across the organization to capture, protect and utilize patents and trade secrets in support of business strategies and to lead strategic development of the patent and trade secret programs;
  • Collaborates and aligns on strategy, planning, action, and communication with the legal team and business leaders;
  • Provides project management and coordination between legal teams and with business clients;
  • Counsel clients on strategic initiatives, legal issues, and risk;
  • Research, draft, review, advise, and negotiate as needed;
  • Provide transaction support including technology, licensing agreements, acquisitions, divestitures, and strategic alliances;
  • Advise clients on potential and pending litigation;
  • Counsel leaders on patent/trademark issues including integrating patent considerations into business plans, patent risk avoidance and mitigation strategies, and strategies for enhancing portfolio strength;
  • Counsel leaders regarding strategy, approach, and value, vendor relationships and contractual issues, and advisability of enforcement.

The Candidate

You will be an experienced and skilled patent attorney with solid communications skills and the ability to work effectively and collaboratively throughout the company. Other qualifications include:

  • Bachelor’s degree or higher in chemistry or material science;
  • European Patent Attorney and fully qualified patent attorney in at least one other jurisdiction e.g., Ireland;
  • Minimum of 5 years’ experience practicing patent law and drafting/ prosecuting or managing the prosecution of patents globally particularly in the areas of cement chemistry, coating chemistry and civil engineering;
  • Experience in building relationships to mine and harvest IP from R&D inventors;
  • Experience in building relationships with senior business partners to communicate IP matters in a clear and comprehensive way;
  • Comfortable representing the Legal Department as one of many company stakeholders with a responsibility in assessing risks, options, and possible outcomes of a proposed company action;
  • Highly professional, self-motivated, accurate, detailed, independent, and flexible with ability to maintain confidentiality and a high level of integrity;
  • Possess initiative and the ability to work as part of a team as well as independently;
  • Ability to identify understand issues, problems, and opportunities and effectively chose a course of action or develop appropriate solutions;
  • Act as a continuous learner and share and apply new knowledge and skill;
  • Ability to drive to completion with a pro-active approach with desire to go above and beyond;
  • Ability to influence and gain commitment across different interpersonal styles.

If you would like to explore this opportunity further, please contact

Milli Bouri

Partner & Practice Head - M&A Transactions

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