Sr. Corporate Counsel, Intellectual Property Asia Pacific

At Trane Technologies® we Challenge Possible. Our brands – including Trane® and Thermo King®  - create access to cooling and comfort in buildings and homes, transport and protect food and perishables, connect customers to elevated performance with less environmental impact, dramatically reduce energy demands and carbon emissions, and innovate with a better world in mind. We boldly challenge what’s possible for a sustainable world.

Job Summary：

Trane Technologies is uniquely qualified to create and sustain safe, comfortable, and efficient environments. Our people and our market leading brands, including Thermo King® and Trane®, work together to inspire progress for our customers.

The Corporate Counsel, Intellectual Property Asia Pacific will report to the Vice President, Chief IP Counsel and Deputy General Counsel, where the primary responsibilities of the role are to direct intellectual property matters, transactional and business matters involving technology and innovation.

In this role, you will be a key member of our Global IP team while centrally engaging our business operations by leading patent creation and deployment efforts, supporting asset portfolio development and functional excellence initiatives in the Asia Pacific region.  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’ll also work closely with cross-functional teams of engineers, product managers, business leaders and legal service providers, assisting in creating a premier performing operation globally. 

Responsibilities: 

• Provide leadership for Intellectual property portfolio development in Asia Pacific, functional excellence initiatives, and the coordination and alignment of IP strategies.
• Management of the Invention capture and review process, and development 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 of the businesses in the AP region.
• Manage IP litigation and enforcement activities, including management of litigation strategies and outside counsel.
• Manage intellectual property transactional matters for the AP region, including technology licensing into the company, or 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.
• 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, 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 projects, IP risk issues, IP strategies, competitive IP assessment analysis, 3rd party technology opportunities and partner/supplier assessment.
• Facilitate portfolio developments, annual reviews, incentive programs, and optimized maintenance processes.

ADDITIONAL REQUIREMENTS

• Must possess an accredited law degree with an emphasis in IP; active legal bar admissions required.
• Must possess a technical degree, or equivalent, in Mechanical, Chemical, Computer and/or Electrical engineering, with demonstrable technical achievement.  Prior experience involving IP strategy and licensing preferred.
• Must be fluent in Mandarin and English languages, with oral and written proficiency
• Must have proven successes in developing valuable IP and IP portfolios involving complex technologies resulting in measurable business growth and impact.
• Must have at least 6 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 2 years as an engineer or technologist preferably in a diversified, global manufacturing environment.
• Must be flexible, self-driven and possess a positive outlook with an innovative and creative spirit.
• Must have working knowledge of the PCT processes, 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-performance 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 progressive, diverse and inclusion environment.
• Multi-geographic prior work experience highly preferred.
• Inventive experience as a patent holder highly desired.

 

Percentage of Travel: 10%

Experience: minimum 6 years

Education Standard: BS Engineering & Law Degree

Education Type: Preferred Degrees in Engineering & Law

We offer competitive compensation and comprehensive benefits and programs that help our employees thrive in both their professional and personal lives. We are proud of our winning culture which is inclusive and respectful at its core. We share passion for serving customers, caring for others, and boldly challenging what’s possible for a sustainable world.

We are committed to achieving workforce diversity reflective of our communities. We are an equal opportunity employer. All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identify, national origin, pregnancy, age, marital status, disability, status as a protected veteran, or any legally protected status.