Description:
Position Summary:A Mobile Technology Research and Development Company is currently seeking a talented IP Professional as Head of Portfolio Creation to lead our internal prosecution team within the Patents Department. Our Portfolio Creation team plays a key role in the Patents Department and includes over 20 highly skilled US and EP patent attorneys located in the US (East Coast) and in France (Issy-Les-Moulineaux and Rennes). The team provides patent support to our Research sites, in the United States, Canada and Europe (France, UK), collaborating actively with our Research and Innovation teams to protect high value inventions, reading on standards or products. The team is focused on providing high value patent assets in line with strategic portfolio management in support of corporate objectives, and also provides support to our licensing and litigation teams.
The successful candidate will lead this international team of highly skilled IP professionals in support of A Mobile Technology Research and Development Company's portfolio creation activities. Reporting directly to A Mobile Technology Research and Development Company's Head of IP, this person will have responsibility for managing and guiding in-house patent prosecution including drafting, filing, and prosecution of A Mobile Technology Research and Development Company's global portfolio, covering innovations in wireless communications, video and AI related technologies. This candidate will combine their significant legal and technical expertise in patent prosecution with managerial experience in leading and guiding teams of IP Professionals. This position will be based in one of A Mobile Technology Research and Development Company's offices in the United States or France and will include periodic travel to other A Mobile Technology Research and Development Company locations.
Required Experience & Key Skills
- Bachelor's and JD degree/EPA qualification, with preferable concentration in relevant technology areas.
- At least 10 years post qualification experience of drafting and prosecution in a reputable law firm or within a corporate legal department and demonstrated managerial skills.
- In depth experience in substantively managing and guiding patent prosecution in key technical areas forming the core of A Mobile Technology Research and Development Company's business.
- Strong technical background in key A Mobile Technology Research and Development Company technologies in particular cellar and video technologies.
- Broad experience of managing global patent portfolios and proven record of actively managing US and EP prosecution.
- Excellent time management capabilities and ability to effectively manage multiple projects in a timely and organized manner under deadline pressure.
- Excellent oral and written communication skills.
- Enthusiastic team motivator combined with positive can-do attitude.
- Team player with ability to build relationships and work in a collaborative manner with different teams across the company, including Research & Innovation project leads, portfolio managers and licensing and litigation support.
- Openness and readiness to evaluate new tools supportive to patent prosecution including integrating AI into prosecution processes.
- Multicultural attitude and ability to work and clearly communicate with team members across different cultures and different geographical areas
Responsibilities:
- Leading and managing a team of highly skilled in-house patent counsel in the generation of a highly valuable global patent portfolio in line with portfolio strategy
- Tracking key performance metrics to drive the aligned department and company strategies and goals
- Ensuring efficient and consistent practice across team members with an emphasis on quality and excellence
- Contributing to the development of and ensuring the implementation of effective patent prosecution strategies designed to achieve business objectives
- Identifying, recommending and implementing improved efficiencies and output by evaluating internal and external tools that could automate or streamline tasks and processes
- Providing guidance on US, EP and PCT legal and administrative matters, including monitoring and advising on legislative, judicial and administrative developments relating to patent procurement
- Ensuring continued education, professional development, and proficiency of team members with respect to patent laws, regulations and legal decisions
- Encouraging and cultivating collaborative relationships between the team and key internal customers and peers, within the Patent teams and the broader company
Location: US locations in Conshohocken PA, Wilmington DE, or France locations in Issy les Molineaux, Rennes