Head of Intellectual Property

Job Description

Job Description

USG is an industry-leading manufacturer of building products and innovative solutions. For over 120 years, Chicago-based USG has developed award-winning wall, ceiling, flooring, sheathing, and roofing products that enable customers to build outstanding spaces where people live, work, and play. With over 8,700 employees across North America and operations around the world, we are steadfastly committed to our core values: safety, innovation, quality, integrity, service, diversity, and efficiency.

We’re big enough that our professionals have the resources to make a difference, yet small enough that you’re not just a number. You’ll work on key initiatives and build strong relationships across the company that will position USG for growth into the future.

USG offers work-life balance, specialist and general/managerial career paths, promotion from within, exceptional benefits, and incredible long-term career opportunities for the right professional. Each year, we have hundreds of employees who celebrate milestone anniversaries with us.

Position Summary

The Head of Intellectual Property (“IP”) will oversee the management and operations of the Company's worldwide intellectual property portfolio and the IP portfolio of its affiliate, Knauf Insulation (North America). This includes continuing to develop those portfolios to advance the business goals of USG and the Knauf Group, executing licensing strategies, ensuring the protection of the company's IP assets, and ensuring the cost-efficient operation of the IP department. The ideal candidate will have extensive experience in IP law, IP portfolio management with a strong ability to align IP strategy with business objectives. The candidate will also supervise the IP department which includes IP staff based in Chicago and USG’s Corporate Innovation Center (“CIC”) located in Libertyville, Illinois.

Key Responsibilities

Portfolio and Operations Management

• Oversee the comprehensive management of the Company's and its affiliate’s IP portfolios, including patents, trademarks, copyrights, and trade secrets.
• Conduct regular reviews of the IP portfolios to identify and evaluate the value and relevance of IP assets.
• Develop and implement strategies for maintaining, expanding, and optimizing the IP portfolios.
• Collaborate with the researchers at the CIC, manufacturing plants, product development, and business unit leads to identify and protect new IP assets.
• Continuously improve the best practices used in the department’s IP operations to enhance the cost effectiveness of the Company’s worldwide IP portfolio and manage IP outside counsel and vendors.

Strategic Planning

• Develop and execute long term IP strategies to achieve key business objectives.
• Stay informed about industry trends, competitor activities, and technological advancements to proactively adjust IP strategies.
• Provide strategic guidance to senior management on IP-related matters, including IP risk assessment and mitigation.
• Negotiate and draft licensing, cooperative development and other agreements involving IP, ensuring favorable terms and compliance with company policies and objectives.
• Develop and implement the Company’s worldwide patent and trademark portfolio strategies coordinating with the Knauf IP Department and the other Knauf companies.
• Provide guidance and strategies for protecting the Company’s and its affiliate’s trade secrets at the CIC and their manufacturing plants.
• Assist with due diligence and other IP aspects of acquisitions including working on IP matters with the Company’s affiliates in North America, including CGC, Inc. (Canada) and USG LatAm and other members of the Knauf Group outside North America.

Leadership and Development

• Lead and manage the internal IP Department staff of lawyers, paralegals, and administrative assistant to ensure business objectives are met by providing responsive, hands-on, practical advice regarding all legal matters.
• Ensure efficient and effective management of IP processes and workflows of the IP Department.
• Guide each IP department member with an aim towards fully maximizing their performance and capabilities, and their continued growth and development, to maximize their contribution to the Company’s and its affiliates’ performance.
• Provide practical, effective, and business based advice and counseling to other senior leaders to establish collaborative relationships across the Company, other Knauf companies, and external organizations.

JOB REQUIREMENTS

Education and Related Experience

• Law Degree from a leading law school
  
• Science or engineering undergraduate or graduate - degree, preferably in chemistry, chemical engineering, materials science, or mechanical engineering.
• Admitted to practice in at least one state, preferably Illinois, and admitted to practice before the United States Patent and Trademark Office and before one or more United States Federal Courts.
• Minimum of ten (10) years' experience as a senior intellectual property lawyer at a respected in-house legal department or a partner of a respected law firm specializing in intellectual property.

Qualifications and Skills

• Excellent communication skills in speaking, writing, and presenting.
• Excellent organizational skills and experience working effectively with all levels of management.
• Extensive experience in the practice of IP law, including patents, trademarks, copyright, and trade secret law.
• Strong strategic IP protection planning and development skills.
• Strong patent application preparation and prosecution skills, including international patent prosecution.
• Experience drafting and negotiating IP agreements and agreements with IP terms.
• Experience with freedom to use and clearance opinions.
• Experience managing and developing a team of IP attorneys and staff.
• Experience with the administration of, and improvements to, IP operations, including budget management, outside counsel management, IP portfolio management and electronic billing systems.
• Ability to communicate effectively regarding IP matters and risks to USG management, USG’s Board, and senior management of the Knauf Group.

Preferred:

• IP litigation experience either as outside counsel or as an in-house attorney.
• Experience with IP litigation in U.S. courts, in the United States Patent Office and in the European. Patent Office and other international IP offices.
• Knowledge of the procedures, software and systems used for intellectual property management.

Rate of pay may be adjusted based on the qualifications and experience of the candidate.

USG employees enjoy a number of benefit options for themselves and their families. These include two medical insurance options, as well as vision and dental coverage. The cost of these optional programs varies based on coverage level - employees generally pay 25% of the monthly premium cost, USG pays the rest. These coverage options are offered on the first day of employment with no waiting period.

Additionally, USG employees enjoy both a 401(k) Investment Plan with company match and a pension plan. Beyond these main features, employees may also choose from a number of additional programs like life insurance, accident insurance, legal insurance, even pet insurance, just to name a few. USG also offers Quarterly (hourly) / Annual (salary) bonus potential for all employees based on performance metrics tied to safety, quality, and productivity. USG also provides employees with paid time off and paid holidays.

Since 1902, Chicago-based USG has been a leader in producing innovative, award-winning products and systems to build everything from major commercial developments and residential housing to home improvements. USG's employees are committed to the highest levels of customer satisfaction and quality in everything we do. Our steadfast commitment to the company's core business values – innovation, quality, integrity, service, diversity, efficiency and safety – have helped us become the company we are today.

EOE including disability/veteran