MNC Group | Corporate Legal Counsel | chennai

2 weeks ago


Chennai, India MNC Group Full time
Job SummaryWe are seeking a skilled Corporate Counsel to join Legal IP - India Team. Client'sintellectual property group offers a very broad-based intellectual property practice.The preference for this role is to be based out of Chennai - Brigade World Trade CenterResponsibilities:• International patent portfolio management• Invention harvesting• Drafting and prosecuting patent applications, and working with external counsel to havepatent applications drafted and prosecuted for US, India and/or EP Jurisdiction; and• General IP counselling• Aftermarket Patent Lifecycle Development• Patent enforcement work experience in India• Knowledge of Indian Patents Act and US Patent Laws• Experience in drafting and prosecution of Software/Electronics/Electrical Patents• The candidate will work closely with Business Unit Patent Attorneys within thecandidate’s assigned technology and product area to evaluate the patentability ofinnovations with specific attention to managing the preparation, drafting, and filing ofpatent applications and office action responses globally.• Additionally, the candidate will draft approximately 10 patent applications annually anddraft responses to select office actions.• However, the candidate will primarily manage outside counsel for the majority of thecandidate’s patent preparation and prosecution docket of work.• The candidate will be expected to work closely with attorneys, engineers, and serviceproviders to collect relevant materials including any invention-related materials forpreparing or having prepared, patent applications that are filed in the U.S., India, andglobally.

• The candidate may be asked to perform research and analysis, provide guidance on avariety of patent and IP-related issues, and act as a liaison for interdepartmentalinitiatives.• The Candidate must have the ability to work under strict deadlines with minimumsupervision.• Our IP team has broad international exposure to IP matters and provides theopportunity to work closely with colleagues spread over the globe.• The role will require a highly motivated individual that is looking for autonomy andflexibility but also looking to be part of an enthusiastic team.Qualification:• The preferred candidate will be holding a LL.B. degree and will be a registered PatentAgent with the Indian Patent and Trademark Office and must have a Bachelors’ degree(B.E. / B.Tech) in engineering in electronics/electrical/computer-science domain.• Strong background with, 2 years of relevant engineering experience, along with 10+yearsof IP experience with patent protection of software, electronics, and electricaltechnologies related to construction equipment or automotive domain is highlydesirable.• Whether your experience has been in-house or in private practice, you mustdemonstrate strong organizational skills, excellent communication skills, and must alsobe prepared to undertake occasional business travel, including occasional travel tovarious facilities within India to liaise with inventors, business unit professionals, andother members of Intellectual Property.

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