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Patent Engineer
3 months ago
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
/ / 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.