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Corporate IP Counsel (Remote) at Cummins

Posted in Architecture 30+ days ago.

Type: Full-Time
Location: Indianapolis, Indiana





Job Description:

Cummins is looking for a talented Corporate IP Counsel to join our team specializing in providing legal advice and service on patent, copyright, and trademark matters, including evaluating patents and potential product infringement issues, preparing and overseeing outside counsel's preparation of patent applications for filing, and representing the company in matters relating to intellectual property that include strategic alliances, joint ventures, development and licensing, R&D and technology transfer, and mergers and acquisitions.

The Cummins Legal function provides a full range of legal services in support of Cummins Inc. and its consolidated businesses. Our United States staff is located in Columbus and Indianapolis, IN. We also have international legal offices located in the United Kingdom, India, Australia, Brazil, China and Mexico and Africa. Through these various offices, we can support our businesses throughout the world. 

In this role, you will make an impact in the following ways:


  • Develop and manage a global legal framework for the protection of Company’s intellectual property portfolio

  • Manage patent prosecution; participate in and implement IP strategy, including preparing and filing US patent applications and assisting in filing applications in other jurisdictions and other foreign office actions

  • Provide practical legal advice regarding intellectual property and global portfolio management that furthers business strategies/objectives

  • Participate in and internal patenting committees

  • Conduct invention disclosure interviews to identify new patentable ideas

  • Assist with intellectual property due diligence in mergers and acquisitions and other strategic initiatives that involve Company’s intellectual property

  • Act as trusted advisor for mid to high level management; has strong grasp of business environment; effectively partners with clients to identify and design needed improvements; provides legal as well as practical advice within the appropriate business context; understands and manages client expectations.

  • Assist in development of legal strategies for business and shares in management of outside counsel relationships

  • May influence or contribute to overall objectives and goals of organization

  • Demonstrate specialization proficiency in one or more areas of law, specialty or function;

  • Support large and/or complex cases and matters worldwide

  • Responsible for project and matter management with appropriate supervision;

  • Provide support and leadership in improvement and issue-resolution projects in both the Legal function and within the business units.

  • Provide mentorship in support of patent prosecution

  • Work with engineering and other business organizations to understand priorities and challenges

  • Instruct and supervise outside counsel and consultants as needed

Analytical Reasoning - The ability to evaluate and analyze data and information, draw conclusions and present an argument based upon the analysis. The use of critical thinking, analytical reasoning, and problem-solving skills are critical to analytical reasoning.

Influencing - Encourages others to change their mindset and/or behaviors to achieve positive results. Presents convincing justification for others to accept ideas and plans. Encourages the open expression of opinions and disagreements. Effectively gains commitment with others to produce high quality work.

Communication - Written and Verbal - Effectively expresses messages and ideas in a clear, organized and relevant manner for a variety of audiences. Develops organized, complete, and convincing communications. Ability to communicate effectively to different levels of the organization.

Relationship Management - Develops rapport, builds trust, and creates value in relationships. Identifies networking opportunities and effectively communicates across functions, business units and with both internal and external business partners.

Conflict Management - Deals with conflict in a way that recognizes and manages differing opinions and ideas and refocuses them in a positive and productive manner. Brings conflict and disagreement into the open and attempts to offer a fair resolution collaboratively while maintaining a constructive working relationship

Education/License/Experience


  • Juris doctor degree from an accredited law school

  • Professional licence to practice law in one state 

  • Intellectual property legal experience of 5-9 years, in a law firm, government, in-house or a combination

  • B.S. in electrical engineering, computer science, material science, or physics; mechanical engineering with experience in software

  • High level technical legal skill required

  • Experience negotiating and drafting IP related agreements (M&A experience not required, but preferred)

  • Experience with expertise in intellectual property agreements, including joint development agreements, patent/trademark/copyright licenses and other IP agreements

  • At least 5 plus years of relevant intellectual property experience, including global and domestic patent prosecution; developing patent strategies, conducting patent analysis, and global IP portfolio management

  • IP litigation experience highly desired

  • Experience prosecuting software and/or analytical device patents preferred





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