Corporate Counsel - IP
At Trane Technologies TM and through our businesses including Trane ® and Thermo King ® , we create innovative climate solutions for buildings, homes, and transportation that challenge what’s possible for a sustainable world. We're a team that dares to look at the world's challenges and see impactful possibilities. We believe in a better future when we uplift others and enable our people to thrive at work and at home. We boldly go. What’s in it for you: Be a part of our mission! As a world leader in creating comfortable, sustainable, and efficient environments, it’s our responsibility to put the planet first. For us at Trane Technologies, sustainability is not just how we do business—it is our business. Do you dare to look at the world's challenges and see impactful possibilities? Do you want to contribute to making a better future? If the answer is yes, we invite you to consider joining us in boldly challenging what’s possible for a sustainable world. The IP Counsel will report to the VP Deputy General Counsel Intellectual Property and Litigation, where the primary responsibilities of the role are to direct intellectual property matters, transactional and business matters involving technology and innovation. The role is based in Davidson, North Carolina or Minneapolis, Minnesota and will follow the company’s hybrid work schedule.In this role, you will be a key member of our Global IP team while engaging our business operations in Strategic Business Units by leading patent creation and deployment efforts, supporting asset portfolio development and functional excellence initiatives. In this role, you will manage the invention review process, develop high-value assets in alignment with portfolio management and handle intellectual property matters as assigned. You will also handle localized patent prosecution and transactional matters involving our technology and innovation. You will provide on-going analysis and clearance efforts related to products, services and competitive assessment. You will work closely with cross-functional teams of engineers, product managers, business leaders and legal service providers, assisting in creating a premier performing operation globally.Thrive at work and at home:
Benefits kick in on DAY ONE for you and your family, including health insurance and holistic wellness programs that include generous incentives – WE DARE TO CARE !
Family building benefits include fertility coverage and adoption/surrogacy assistance.
401K match up to 6%, plus an additional 2% core contribution = up to 8% company contribution.
Paid time off, including in support of volunteer and parental leave needs.
Educational and training opportunities through company programs along with tuition assistance and student debt support .
Learn more about our benefits here (https://careers.tranetechnologies.com/global/en/benefits) !
Where is the work: Hybrid:This position has been designated as a Hybrid work schedule with work performed onsite 3 days each week. What you will do:
Intellectual property portfolio development, functional excellence initiatives, and the coordination and alignment of IP Strategies.
Invention capture and review process, and develop high-value IP assets that, as defined by the Chief IP Counsel, are of quantity and quality in alignment with portfolio management and strategy objectives.
IP litigation and support, including management of litigation strategies and outside counsel.
Manage intellectual property transactional matters for the business area(s) assigned, including technology licensing into the Enterprise, out to other entities.
Assist in the development of strategies and technology roadmaps for the assigned business area(s) with attention to IP metrics and achieve performance results required.
Prepare, prosecute, and develop associated portfolios of strategic, high quality patent applications protecting products, services, and strategic innovation objectives, as assigned.
Provide focused legal advice and guidance on technology, IP and innovation matters involving contracts, joint development agreements, non-disclosure agreements, strategic alliances, international IP development and commercialization issues, competitive technology, changes in the law, and the like.
Provide trademark and copyright oversight and training, including clearance and registration of trademarks, global enforcement, takedown notices, and domain name support.
Active participation in creating dynamic and effective integrated technical teams for projects, individual inventive initiatives and innovation activities.
Support educational sessions, invention creation initiatives and attend to all details in the preparation and prosecution efforts, IP transactions, and activities as assigned.
Successfully enact developed strategies in the business by identifying, harvesting and protecting important inventions that are in alignment with strategic initiatives.
Support IP clearances, Innovation On-Demand projects, IP risk issues, IP strategies, competitive IP assessment analysis, 3rd party technology opportunities and partner/supplier assessment.
Provide creative approaches to innovation leaders and technologists in leveraging technology, charting next generation technologies, and identifying opportunities to improve competitive advantage through IP opportunities.
Facilitate portfolio developments, annual reviews, incentive programs, and optimized maintenance processes.
Facilitate the development of a world class IP department, including advising and mentoring various IP counsel, oversight of administrative personnel, support of IP portal, and management of an appropriate IP budget including outside counsel billing and oversight.
What you will bring:
Must possess at least a BS in a technical degree, or equivalent, in Mechanical, Chemical, Computer and/or Electrical engineering, with demonstrable technical achievement. Prior experience involving IP strategy, licensing, software and/or artificial intelligence preferred.
Must possess an accredited Juris Doctor (JD) with an emphasis in IP; active admissions to the USPTO and at least one state bar required.
Must have 5-8 years combined technical/legal experience, including (1) at least 2 years patent/IP preparation, prosecution, portfolio management experience particularly in inventor-facing and strategy-oriented aspects involving technology roadmaps, competitive IP assessment, invention development, state of art/field analytics, and reverse engineering; (2) at least 1 year direct involvement in IP clearance/opinion, freedom-to-operate processes, competitive claim assessment, design-around activities, and patentability review committee leadership with business impact; (3) at least 1 year advising on and attending to contracts, licensing, technology agreements, etc.; and (4) at least 1 year as an engineer or technologist preferably in a diversified, global manufacturing environment.
Key Competencies:
Must have proven successes in developing valuable IP and IP portfolios involving complex technologies resulting in measurable business growth and impact, preferably in a competitive six sigma/lean environment.
Must be flexible, self-driven and possess a positive outlook with an innovative and creative spirit.
Must have working knowledge of the US and foreign filing strategies, and litigation awareness.
Must be able to identify, lead, and support appropriate tasks, strategies and implementations in leveraging our IP Team’s efforts for competitive IP business advantage.
Must have proven successes in communicating complex issues in an understandable manner with executives, business and technical leaders, and legal service providers.
Communications and issues should deeply involve identifiable solutions, alternatives and risks associated with strategy, technology, competition and IP involving global and geographically-dispersed situations.
Must be able to continually improve to successfully operate in a high-performing IP team.
Must have excellent analytical skills and a diversity of technical expertise, including the ability to relate to general technologies with one or more areas of expertise.
Must be culturally aware and foundationally demonstrate communications, actions and values consistent with our inclusive environment.
Foreign language capability a plus.
Compensation: Base Pay Range: 168,900-224,100Total compensation for this role will include a commission/incentive plan. Disclaimer: This base pay range is based on US national averages. Actual base pay could be a result of seniority, merit, geographic location where the work is performed. Equal Employment Opportunity: We offer competitive compensation and comprehensive benefits and programs. We are an equal opportunity employer; all qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, pregnancy, age, marital status, disability, status as a protected veteran, or any legally protected status.