Description:

Your role in the mission:
An Industrial Machinery Manufacturing Company is seeking an Intellectual Property Counsel who will be responsible for differentiating our intellectual property as an offensive and defensive asset by building, protecting, and managing our portfolio. This further entails maximizing the value of IP while ensuring freedom-to-operate. This is particularly true with respect to sponsored research and joint development agreements.

The An Industrial Machinery Manufacturing Company IP portfolio spans patents, licenses, trade secrets, copyrights, and trademarks.

You will be responsible for implementing the company's intellectual property strategy, managing our IP portfolio, and overseeing all intellectual property-related legal matters. The IP counsel will have a strong background in: IP portfolio management; IP law and patent prosecution; patent drafting, patent licensing and other technology transactions; patent landscape analysis and IP strategy
  • Establishing and managing a cross-functional portfolio management process.
  • Formalizing technology transactions with universities, labs, other companies, and government institutions by the development and negotiation of agreements in concert with IP counsel, the An Industrial Machinery Manufacturing Company team, and prospective collaborators.
  • Educating and empowering our employees to proactively conceive, recognize and protect inventions.
  • Establishing and managing an NDA [non-disclosure agreement] process for review, approvals, and tracking.
  • Draft patents and work with external patent-drafting and filing
  • In a timely manner, review communications from external patent and trademark counsels, and ensure decisions of patent applications, including foreign filings in concert with the IP Portfolio Management team.
  • Collaborate with cross-functional teams, including research, development and engineering, marketing, and legal, to ensure IP protection and to identify new IP opportunities.
  • Identify critical technologies for An Industrial Machinery Manufacturing Company – both base and differentiating.
  • Track and analyse competitive patent activity.
  • Landscape our patent space and identify portfolio gaps and white space.
  • Develop patent strategies to close gaps and seize opportunities.
  • Stay up to date with the latest developments in IP law and industry trends, and provide guidance and advice to the company's management team and all IP stakeholders.
  • Work closely with technical teams to understand their technologies and advancements.
  • Serving as a champion and voice for IP across the company and in the leadership team.

What You'll Need:
  • A degree, preferably MSc or PhD, in engineering, physics, materials science, or a related field. A law degree or patent agent credentials are a big plus.
  • Minimum 5-10 years of experience in a fast paced environment.
  • Strong knowledge of patent law, including US and international patent laws and procedures.
  • Excellent communication and interpersonal skills, with the ability to collaborate effectively with cross-functional teams, senior management, and external parties.
  • Strong analytical and problem-solving skills.
  • Creative with an ability to expand the scope of inventions and claims.
  • Ability to think strategically and provide guidance and advice on intellectual property matters and sourcing to the company's senior management.
  • In IP management and transactions within a commercial enterprise with a focus on patent prosecution.
  • Working closely with technical teams and inventors in engineering physical sciences, particularly physics.
  • Managing external relationships with outside counsel, patent agents, and other IP service providers.
  • Formalizing technology transactions with a broad spectrum of parties (e.g., universities, labs, companies, and government agencies) is a big plus.