Jeff Urian

About Jeff Urian

Results-driven corporate in-house and law firm attorney with 22+ years progressive legal experience, a strong business acumen and the capacity to learn quickly to become a strategic business partner with proven skills in support of commercial business activities and leading IP transactions and commercial and IP contracts. Skilled in developing and implementing global IP protection strategies, leading IP litigation, advising senior leadership, learning emerging technologies in support of M&A activities. Collaborative working with diverse teams & groups. Significant experience managing patent portfolios, patent drafting and prosecution, as well as preparing and prosecuting global trademark applications. Registered to practice before the US Patent & Trademark Office (USPTO)

Experience

1. Senior Intellectual Property Counsel

   伊顿

   Aug 2016 — Present · MI, US

   In-house lead IP Counsel globally responsible for both eMobility (new emerging vehicle electrification business) and Vehicle Group businesses of Eaton Corporation,$3+ billion business groups designing and manufacturing automotive, commercial and vocational vehicle components.Responsibilities include- Creating and managing a global portfolio of patents- Interfacing and partnering directly with senior leadership at corporate and business unit level- Developing and implementing IP processes - Managing all aspects of IP transactions and strategy including:• Drafting and negotiating all IP-centric agreements and IP and other provisions of general commercial agreements, including licensing agreements, joint development and collaboration agreements, indemnification agreements and clauses, purchase and supply agreements (exclusive and non-exclusive) and distributor agreements, confidentiality agreements, consulting agreements, and software agreements.o Training executives, engineers, inventors, and managers on IP protection and commercial aspects of transactions and decisionso Performing due diligence and freedom to operate analysis for new product offerings to avoid adversarial proceedingso IP enforcement including patent and trademark rightso Providing commercial activity support with a cross-functional teamo Supporting the creation and management of joint ventures domestically and globallyo Lead Attorney for Safety Committeeo Lead IP Counsel for joint venture between Eaton and Cummins – Eaton Cummins Automated Transmission Technologies LLC • Successfully reduced IP spend while maintaining focus on critical IP properties and new product initiatives and corporate goals

Education

• Saint Louis University School of Law

  Juris Doctorate, Law

  1994 — 1998

• Purdue University

  Bachelor of Science (B.S.), Mechanical Engineering

  1986 — 1990

Skills

• Intellectual Property
• Due Diligence
• Trade Secrets
• Mergers & Acquisitions
• Copyright Law
• Process Improvement
• Legal Research
• Negotiation
• Patentability
• Business Development
• Patent Law
• Risk Management
• Patent Litigation
• Strategy
• Trademarks
• Restructuring