Assistant General Counsel VP, Intellectual Property (Chief IP Counsel)

H.B. Fuller

St Paul, MN

POSITION OVERVIEW

Assistant General Counsel VP, Intellectual Property (Chief IP Counsel) reports to the

General Counsel has primary, global responsibility for the development, protection, enforcement, and strategic use of the Company’s intellectual property assets, including patents, trademarks, trade secrets, and related IP rights worldwide.

This role providesstrategic legal counsel to senior leadership, leads the global IP function, manages an attorneyand a patent agent, patentcoordinators, IP paralegals and a law/billing clerk. The role is responsible for managing external IP professionals and related budgets globally, including budgets for filing/prosecution, maintenance/renewals, and oppositions/conflicts.

PRIMARY DUTIES

This individual will be involved in a variety of strategic, advisory, managerial, and

operational intellectual property functions which support all global business units, with a focus on protecting our differentiated premium products to support the Company's growth.

LEAD GLOBAL INTELLECTUAL PROPERTY STRATEGY AND GOVERNANCE (45-55%)

Define and implement a global IP strategy aligned with business objectives; oversee policies, processes, and standards for IP creation, protection, and use.
Develop and manage an in-house IP Team of experts
Proactively provide business unit reviews for patents, trade secrets, and trademarks to effectively manage spending while optimizing value
Maintain trade secret and formula security policy
Maintain ongoing client-tailored training globally for patents, trademarks, and trade secrets
Provide legal advice on IP risks and opportunities with a deep understanding of chemistry and of business strategy, including but not limited to providing non-infringement and invalidity assessments
Counsel on and implement IP holding structure and intercompany licenses globally

DRAFT AND NEGOTIATE IP-RELATED AGREEMENTS (20–30%)

Lead on Licenses and Joint Development Agreements

Assist non-IP lawyers with IP clauses in supply, contract, manufacturing, or other commercial agreements to protect and leverage Company IP while mitigating risks of IP infringement.

MANAGE IP-RELATED CONFLICTS/LITIGATION GLOBALLY (10–20%)

Select and manage outside counsel, remaining intimately involved to guide executive leaders in decision-making and to set and manage strategy for any litigation.

SUPPORT M&A IP DUE DILIGENCE AND INTEGRATION (10–20%)

Customize IP due diligence strategies and consult on deal risk mitigation approaches
Set integration strategy, ensuring clients understand all acquired IP

EMPLOYEESSUPERVISED

Direct reports: Patent/IP Counsel, Patent Agent, Trademark Paralegal, and Law Clerk. Indirect reports: Patent Paralegals and Patent Coordinators

BUDGETARYRESPONSIBILITY

Responsible for setting and managing budgets related to patent and trademark filings, prosecution, and maintenance costs. This role has significant influence over outside

counsel selection/use/spend and portfolio investment decisions. This role also manages outside counsel spend related to outsourced IP transactional and litigation matters.

Minimum Requirements

For US candidates, Juris Doctor (J.D.) plus patent bar/licensed in the USPTO. For candidates in Germany or Portugal, they must be a licensed Patent Attorney capable of filing and prosecuting patents in the EPO. All candidates must have a Bachelor’s degree or greater (or equivalent experience) in Chemistry or Chemical Engineering
Minimum 15+ years of progressive legal experience in intellectual property law, including significant in-house experience
Demonstrated expertise in patents, trademarks, IP transactions, and IP risk management in a global business environment
Fluent in English
Active membership in good standing with at least one U.S. state bar (or equivalent jurisdiction), or in Germany or Portugal

Strong leadership, communication, judgment, and strategic decision-making skills
Standard office physical requirements
Demonstrates proficiency in the following competencies:

Innovation – Leveraging possibility thinking in creating new value for customers

Accountability – Delivering excellence through personal motivation and engagement

Performance Excellence – Elevating the performance bar and delivering on commitments with high-quality solutions

Change and Risk Taking – Working toward our future, altering the course as needed, and balancing risks and rewards in making decisions

Customer Focus – Understanding customer needs and delivering superior solutions with passion

Teamwork – Encouraging collaboration, trust, and cooperation among and within work groups

Click on the link to learn more about H.B. Fuller’s Competencies

PREFERRED QUALIFICATIONS

Experience managing global patent portfolios and coordinating IP strategy across multiple jurisdictions.
Experience managing IP in emerging markets
Experience managing and developing people.
Adhesive chemistry acumen
Demonstrated Business Partner
Experience advising executive leadership and Boards on IP strategy, M&A, and risk

PHYSICAL ENVIRONMENT