Patent Engineer
7 days ago
Job Description:
Managing Invention Disclosure and Patent Filings and Prosecution
- Connecting with engineers/inventors and developing an in-depth technical understanding of the invention disclosure
- Using internal workflows and coordinating for the evaluation of the invention disclosures through business divisions
- Conducting detailed and a strategy led prior art search to make a patentability assessment of the invention disclosure
- Preparing patent claims and patent specification right from scratch, with multiple claim categories
- Being responsible for multiple patent files across the globe and handling multi jurisdiction patent prosecution
- Preparing responses to examination reports from patent examiners
- Managing hearings before patent examiners and preparing responses.
Strategic IP Management
- For a specific and defined portfolio, handling end to end patent strategy
- Conducting stakeholder meeting for developing a well defined patent strategy and ensure business stakeholder alignment to the patent strategy
- Responsible for implementation of the patent strategy
- Providing patent strategy input to an overarching IP strategy.
- Advise on Freedom to Operate – providing analysis and opinion on issued patents that may be infringed by the product / process being developed
Qualifications
Essential Qualifications and Skills
- B.Tech. / M.Tech. / M.Sc./ Ph.D. in Engineering (Computers, Electronics, Electrical, Mechanical)
- Candidate should be a registered Patent Agent with the Indian Patent Office with minimum 6 - 9 years of experience in drafting and prosecution of patent applications (at a law firm or in-house IP department) and having thorough understanding and experience of searching across various paid and unpaid databases.
- Should have expertise in handling IPR related matters (patents and designs), from filing for registration of IP to handling prosecution matters in various jurisdiction
- Strong communication and drafting skills and fluency in English (both written and oral).
- Able to work in the team
- Good interpersonal and stakeholder management skills.
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