Need help hiring top legal talent? Contact our team.
Company logo

Senior IP Counsel I

Posted Oct 14
Full Time
Lincolnshire, Illinois

Remote Work: Yes


Overview:
At Zebra, we are a community of innovators who come together to create new ways of working to make everyday life better. United by curiosity and care, we develop dynamic solutions that anticipate our customer’s and partner’s needs and solve their challenges.
 
Being a part of Zebra Nation means being seen, heard, valued, and respected. Drawing from our diverse perspectives, we collaborate to deliver on our purpose. Here you are a part of a team pushing boundaries to redefine the work of tomorrow for organizations, their employees, and those they serve.
 
You have opportunities to learn and lead at a forward-thinking company, defining your path to a fulfilling career while channeling your skills toward causes that you care about – locally and globally. We’ve only begun reimaging the future – for our people, our customers, and the world.
 
Let’s create tomorrow together.
 

The Intellectual Property (“IP”) Group has global responsibility for all intellectual property matters at Zebra, which includes patents, trademarks, copyrights, and trade secrets. The IP Group helps drive Zebra’s success by building valuable IP assets that contribute to both the competitiveness and defensibility of the company. Zebra’s IP Group works with a variety of business partners, such as those employees in Engineering, Marketing, Product/Project Management, Procurement, Sales, Human Resources, and Finance. The Senior IP Counsel I, reporting to Director Counsel Patent Operations, demonstrates leadership in providing legal counsel and services on matters involving invention capture and harvesting for his/her assigned business partners. The Senior IP Counsel I relies on an advanced skillset to manage his/her patent prosecution docket independently and execute Zebra’s global IP strategies with minimum supervision. The Senior IP Counsel I maintains and provides reports, as needed, to keep Legal management and key stakeholders abreast of the status of the patent portfolio. Key responsibilities of the Senior IP Counsel I are independently preparing and prosecuting utility and design patent applications, managing assigned patent portfolio, managing outside counsel, interacting closely with business partners to understand business needs and objectives, understanding competitive landscape, and performing invention harvesting activities. 

 

The Senior IP Counsel I will report to Director Counsel Patent Operations and will be part of a Patent Operations Group consisting of several patent attorneys that support all patenting activities across Zebra business units.  Ideal candidate will be a USPTO registered patent attorney with 7+ years of hands-on patent preparation and prosecution experience and an advanced skillset to perform the key tasks independently.  Technical background with an undergraduate degree in Electrical or Computer Engineering, Computer Science, or Physics is preferred.


Responsibilities:
  • Independently prepares and prosecutes utility patent applications for an assigned patent portfolio, and actively manages outside counsel to do the same
  • Drafts and prosecutes design patent applications across all Zebra business units
  • Works with a Product and Technology Analyst to manage drafting of all defensive publications for Zebra
  • Participates in the foreign filing decision process
  • Interacts closely with outside counsel, business partners, and members of the Legal Department to foster relationships, to understand business needs and business objectives, and to ensure that matters are being handled in a timely and competent manner
  • Leads and/or supports invention harvesting activities to assist assigned business unit(s) in capturing inventive activity
  • Partners with key stakeholders to execute global IP strategies for assigned portfolio
  • Works with Legal team members to assist in evaluating assigned patent portfolio and make strategic decisions related to the assigned patent portfolio
  • Actively participates in patent review committee meetings and other activities related to the review and evaluation of invention disclosures, and advises on patentability issues related to assigned technology areas
  • Generates and presents training materials, as assigned, to educate and inform business partners on various intellectual property matters
  • Understands competitive landscape for assigned business unit(s)
  • Understands, analyzes and articulates up to moderately complex issues and/or relevant laws, worldwide, and recommends solution or course of action
  • Prepares reports and provides work product to Director Counsel Patent Operations on as-needed basis
  • Engages business partners and Legal Department colleagues to gain knowledge and understanding of Zebra’s business units/functions as they relate to area(s) of responsibility
  • Assists in special projects, as assigned.

Qualifications:

Minimum Qualifications:

  • Juris Doctor from accredited law school, with strong academic credentials
  • Technical bachelor’s degree and an excellent understanding of electrical and software arts
  • 7+ years of hands-on patent preparation and prosecution experience and an advanced skillset to perform key tasks independently
  • Registration to practice before the U.S. Patent and Trademark Office

Preferred Qualifications:

  • Technical background with an undergraduate degree in Electrical Engineering, Computer Engineering, Computer Science, or Physics
  • Work hybrid schedule in Lincolnshire, IL (remote candidates will be considered)

Key Skills and Competencies:

 

  • Excellent analytical, research, and organization skills
  • Exceptional interpersonal and communication (written and oral) skills
  • Ability to provide strong strategic thought to Zebra’s patent processes and best practices
  • Ability to work under pressure with aggressive deadlines, in a dynamic environment, including managing and prioritizing a large prosecution docket
  • Acts as a leader to provide advice in a business manner based on principles of appropriate risk management rather than risk avoidance
  • Exercises initiative to solve up to moderately complex issues with minimum supervision
  • Ability to manage assigned docket items to closure with minimum supervision, and the judgment to know when to ask questions and escalate issues
  • Participates as a team player both within and outside the Legal Department
  • Strong business acumen
  • Unquestioned ethics and integrity
  • State bar admission
  • Registration to practice before the U.S. Patent and Trademark Office

Come Join the Herd! 

 

Zebra is an equal opportunity/affirmative action employer committed to a diverse and inclusive workplace All qualified candidates will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identify, national origin, disability and protected veteran status or any other basis prohibited by law. If you are an individual with a disability and need assistance in applying for a position, please contact us at workplace.accommodations@zebra.com. We will ensure that individuals with disabilities are provided reasonable accommodation to participate in the job application or interview process, to perform crucial job functions, and to receive other benefits and privileges of employment.

 

Know Your Rights:

https://www.eeoc.gov/sites/default/files/2022-10/EEOC_KnowYourRights_screen_reader_10_20.pdf

Conozca sus Derechos:

https://www.eeoc.gov/sites/default/files/2022-10/22-088_EEOC_KnowYourRightsSp_10_20.pdf

 

Zebra is a federal contractor and is committed to an alcohol and drug free workplace. As a result, all U.S. based employees are subject to the Drug and Alcohol-Free Workplace Policy and Procedure.

 


Zebra Total Rewards includes more than just pay and is structured to meet the needs of our changing global business and evolving talent. We are committed to providing our employees with a benefits program that is comprehensive and competitive – including healthcare, wellness, inclusion networks, and continued learning and development offerings. We offer community service days, in addition to the traditional insurances, compensation, parental leave, employee assistance program and paid time off offerings depending on the country where you work.


 

Salary: USD 150400.00 - USD 225600.00 Yearly


Salary offered will vary depending on your location, job-related skills, knowledge, and experience.
Additionally, all Zebra roles are eligible for cash incentive programs. For example, sales roles have additional opportunity to earn substantial variable compensation tied to quota achievement. In most other roles, the Zebra annual cash incentive program links Company and individual performance together. Some roles may also be eligible for long-term incentive equity awards.



To protect candidates from falling victim to online fraudulent activity involving fake job postings and employment offers, please be aware our recruiters will always connect with you via @zebra.com email accounts. Applications are only accepted through our applicant tracking system and only accept personal identifying information through that system. Our Talent Acquisition team will not ask for you to provide personal identifying information via e-mail or outside of the system. If you are a victim of identity theft contact your local police department.