Corporate Legal Counsel

2 weeks ago

Chennai, India MNC Group Full time

Job Summary

We are seeking a skilled Corporate Counsel to join Legal IP - India Team. Client's

intellectual 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 Center

Responsibilities:

• International patent portfolio management

• Invention harvesting

• Drafting and prosecuting patent applications, and working with external counsel to have

patent 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 the

candidate’s assigned technology and product area to evaluate the patentability of

innovations with specific attention to managing the preparation, drafting, and filing of

patent applications and office action responses globally.

• Additionally, the candidate will draft approximately 10 patent applications annually and

draft responses to select office actions.

• However, the candidate will primarily manage outside counsel for the majority of the

candidate’s patent preparation and prosecution docket of work.

• The candidate will be expected to work closely with attorneys, engineers, and service

providers to collect relevant materials including any invention-related materials for

preparing or having prepared, patent applications that are filed in the U.S., India, and

globally.


• The candidate may be asked to perform research and analysis, provide guidance on a

variety of patent and IP-related issues, and act as a liaison for interdepartmental

initiatives.

• The Candidate must have the ability to work under strict deadlines with minimum

supervision.

• Our IP team has broad international exposure to IP matters and provides the

opportunity to work closely with colleagues spread over the globe.

• The role will require a highly motivated individual that is looking for autonomy and

flexibility 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 Patent

Agent 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+years

of IP experience with patent protection of software, electronics, and electrical

technologies related to construction equipment or automotive domain is highly

desirable.

• Whether your experience has been in-house or in private practice, you must

demonstrate strong organizational skills, excellent communication skills, and must also

be prepared to undertake occasional business travel, including occasional travel to

various facilities within India to liaise with inventors, business unit professionals, and

other members of Intellectual Property.

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