Senior Attorney - Intellectual Property
5 - 7 years experience • Legal Services
The Senior Attorney, Global Intellectual Property will be responsible for overseeing patent preparation, prosecution and acquisition worldwide, with a particular focus on activities outside the US, including non-US patent applications (EU and PTC patent applications). The patent preparation and prosecution responsibilities will include: (i) ensuring Invention Disclosures Records (IDRs) are obtained from inventors for their inventions, (ii) fostering the review of IDRs to determine for which inventions patent applications will be filed, (iii) overseeing outside counsel with respect to drafting, patent applications and Office Action responses, (iv) ensuring foreign counterpart patent applications are timely prepared, filed and maintained, and (v) helping to support and further develop patent portfolio strategy. You will be expected to have knowledge and experience with respect to IP issues and matters outside of the US, including patent, trademark, copyright and trade secret matters, and providing associated counsel. The IP Attorney will be expected to engage in transactional matters relating to IP indemnification, acquisition and divestitures, ownership and rights (including collaboration agreements), licensing and other monetization, and legal guidance to business partners at all levels with respect to patent, trademark, copyright, and trade secret issue and matters.
KEY AREAS OF RESPONSIBILITY
- Identify, with the business clients, patent filing strategic focus areas.
- Mine for potentially patentable inventions.
- Work with business clients to document, through IDRs, inventions.
- Ensure IDRs are obtained for inventions falling with strategic focus areas.
- Facilitate IDR reviews for patent filing determinations.
- Ensure US patent applications and foreign counterpart patent applications are prepared and timely filed.
- Manage outside counsel, including reviewing and approving their work, related to drafting patent applications, and amendments, appeals and other responses to Office Actions.
- Help ensure that patent applications and patents worldwide, especially claims, are directed to the most strategic and important areas for the company and ultimately provide maximum value, including reviewing patent applications, especially claims, prior to filing and issuance, reviewing patent application claims and modifying them throughout the patent application process to ensure issued patents will provide such value and performing maintenance reviews and ensuring associated fee are payed, are made.
- Aid in decision making as to which US patent applications will be filed outside the US and maintained, and in what jurisdictions.
- Manage translations of US patent application into foreign language when appropriate.
- Manage non-US patent oppositions.
- Manage budgets and outlooks.
- Engage in transactional matters relating to IP indemnification, acquisition & divestitures, ownership and rights (including with respect to collaboration agreements), licensing and other monetization with respect to trademarks, copyrights, and trade secrets.
Qualifications: BASIC REQUIREMENTS
- Legal degree or non-US equivalent; US JD or certified European Patent Attorney – preferably both.
- Licensed to practice IP law in at least one recognized jurisdiction, and admitted to practice before a patent office: USPTO or other non-US patent office – preferably both.
- At least a B.S. degree or non-US equivalent in Computer Science, Computer Engineering, ElectricalEngineering, or anothertechnology area which includes software as a part of its curriculum.
- 7+ years’ experience in IP, including especially US and non-US patent preparation, prosecution and acquisition (including having drafted patent applications and having done patent prosecution with respect to US, EU and PTC patent applications).
- Excellent ability and experience in identifying key areas and focus for patent applications, especially with respect to patent.
- Successful ability to work with engineers to identify inventions.
- A good understanding and experience, with not only patent law, but copyright, trademark and trade secret law, especially outside of the US.
- Ability to do IP transaction work, including one or more of IP indemnification, acquisition & divestitures, ownership and rights (including with respect to collaboration agreements), licensing and other monetization, and to provide legal guidance to business partners with respect to patent, trademark, copyright, and trade secret issue and matters.
- Experience and ability with managing outside counsel globally.
- Excellent communication skills, including to interaction with all levels of the business and members of the law department, and writing skills.
- Excellent origination skills, and sense of urgency, as appropriate and required.
- Experience and ability to manage a budget and outlooks.
- A true and complete team player.
- Good technical understanding of software and electro-mechanicaltechnologies.
- Experience with the financial and banking industry and associated technology.
Job Type: Full-time
- Senior Attorney: 5years
- prosecution and acquisition (including having drafted patent: 7years
- financial and banking industry and associated technology: 2years
- Good technical understanding of software and electro-mechani: 2years
- IP, including especially US and non-US patent preparation: 7years