JAMES Lenney
Dublin
Summary
Vice President of Global Intellectual Property with proven expertise in IP strategy and portfolio management. Successfully led contract negotiations and M&A due diligence, driving innovation across multiple sectors. Managed global teams to enhance invention disclosures and align IP objectives with R&D initiatives.
Overview
28
28
years of professional experience
Work History
Vice President Global Intellectual Property
James Hardie Technology Ltd.
Dublin
10.2009 - Current
- Established global IP strategy with responsibility for IP portfolio consisting of over 2000 patents, designs, trademarks, copyright and trade secrets.
- Director of IP holding company, drafting and presenting board papers while chairing board meetings to ensure strategic alignment.
- Managed IP staff (attorneys, IP coordinators and administrators) setting business goals, establishing development plans, and conducting end of year reviews.
- Managed IP budget while fostering relationships with outside counsel and IP vendors to optimize resource allocation.
- Worked directly with senior R&D management setting yearly IP goals for R&D projects.
- Oversaw IP litigation, managing case strategy and settlement negotiations to protect company interests.
- Negotiated and drafted IP license agreements, NDAs, JDAs, and R&D service contracts.
- Lead IP due diligence on all M&A activity and post-acquisition integration.
- Manager of JH Dublin office with responsibility for 24 employees and all HR and facility matters.
Senior IP Attorney
Agilent Technologies UK Ltd.
Winnersh Triangle
06.2000 - 07.2009
- Managed daily operations of UK IP department, overseeing IP administration, docketing, and deposits accounts to ensure seamless functionality.
- Supported IP matters for 10+ clients across Agilent’s electronic measurement and life science business groups, facilitating collaboration among over 100 engineers and scientists.
- Advised senior business managers on all aspects of intellectual property law, including infringement and validity opinions, right to use searches and litigation strategy.
- Developed and implemented invention disclosure process and incentive scheme resulting in a 10 fold increase in invention disclosure submissions.
- Established and managed global Innovation Workshop programs to foster creativity and drive innovation across the organization.
Technical Assistant
Siemens UK Ltd.
Bracknell
09.1997 - 06.2000
- Drafted and prosecuted patent applications for Siemens businesses and technologies, enhancing intellectual property portfolio in Europe and the US.
- Filed patent applications in GB, EPO, and via PCT, ensuring compliance with international IP regulations.
Skills
- Global IP strategy
- Patent management
- IP litigation oversight
- Contract negotiation
- M&A due diligence
- Intellectual property law
Accomplishments
• Insourced entire IP portfolio resulting in a multimillion Euro yearly savings, while improving the strength and focus of the portfolio.
• Recruited, developed and retained strong global IP team.
• Lead IP due diligence through to successful completion of several key M&A projects.
• Established and implemented strong global brand projection policy.
• Successfully defended company trades secrets, patents and trademarks in multiple jurisdictions.
• Extensive knowledge of governance requirements for Irish domiciled IP holding companies.
• Recruited, developed and retained strong global IP team.
• Lead IP due diligence through to successful completion of several key M&A projects.
• Established and implemented strong global brand projection policy.
• Successfully defended company trades secrets, patents and trademarks in multiple jurisdictions.
• Extensive knowledge of governance requirements for Irish domiciled IP holding companies.
Qualifications And Education
- UK and European Patent and Trademark Attorney (2008)
- PhD, Instrumentation and Analytical Science (1995), University of Manchester Institute of Science and Technology, Manchester, UK
- B.S., Optics (1987) University of Rochester, Rochester, N.Y., USA
Additional Information
Member of UK/Irish Institute of Directors. Experience with MS Office, commercial patent docketing packages, document management software and legal accounting packages. Dual US and British citizenship. I enjoy travel, exercise and walking my dog.
Timeline
Vice President Global Intellectual Property
James Hardie Technology Ltd.
10.2009 - Current
Senior IP Attorney
Agilent Technologies UK Ltd.
06.2000 - 07.2009
Technical Assistant
Siemens UK Ltd.
09.1997 - 06.2000