Description:

Overview:
The Patent Agent position exists to reduce external outside counsel spending and assist the AGC of IP with management of the Company's Patent portfolio and to help drive innovation from Engineering and Industrial Design.

Responsibilities:
  • Patent Prosecution Management: including review invention records, drafting, filing and prosecuting patent applications globally before the Patent and Trademark Office and instructing Foreign Associates; Overseeing internal team process for seeking execution and filing of formal documents including declarations and assignments globally
  • Outside Counsel Management: including instructing, reviewing, overseeing and approving outside counsel's work on various global patent matters.
  • Docket and Filing Systems Management: overseeing and establishing the company's docketing practices and electronic filing room systems filing practices, and overseeing Docketing Specialist activities regarding patent systems
  • Patent/Technology Analysis and Landscaping: including conducting prior art searches and landscape researches and opinions to guide R&D development
  • Patent Portfolio and Patent Strategy Management: including conducting patent portfolio reviews with Design, engineering and business team, developing global patent strategies based on business roadmap and R&D development
  • Managing Patent Prosecution Budget: including developing efficient means to provide the most value and protection with limited budget, tracking spending throughout the year
  • Harvest inventions: including understanding R&D activities, scheduling and running technical discussions with engineers, and assisting in documenting all IP discovered.
  • Client Counseling: provide guidance to R&D and business on various patent matters globally, provide training on patent process and strategy
  • Patent Annuity Management: including determine the value and activity associated with various patents, seeking input from business and instructing annuity firm accordingly
  • Global Patent Coordination: including various meetings throughout the year, developing patent strategy for cross-regional inventions with Global counterparts and seeking global patent protection
  • Evaluate current processes and implement new cost and time efficient processes within the IP team

Qualifications:
  • A bachelor's degree (and preferably an advanced degree) in engineering (preferably mechanical engineering) or related discipline with excellent academic credentials
  • Registered patent agent
  • A minimum of five (5) years of relevant work experience
  • Demonstrated experience in examining or preparing and prosecuting patent applications (utility and preferably design)
  • Excellent writing and research abilities are a must, as well as proficiency in written and verbal communication, and strong organizational skills
  • Self-driven and able to work independently