Patent Agent

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Patent Agent
Responsibilities: Providing pro-active and cost effective and efficient IP services tailored to the needs and priorities of the Company’s business units, including interacting and managing relationships with technical, business and legal personnel. Working closely with the internal IP attorneys to continually develop the IP Department. Understanding the relevant Company businesses, including knowledge of relevant business and technology strategies, R&D activities and commercialization plans. Collaborating with the business units and leadership to align IP strategies with business, technology and commercialization plans. Implementing IP strategies in a cost- and resource-efficient way by providing a broad range of IP advice and services, including the securing and maintaining of appropriate worldwide protection for Company IP, and advising on the protection of confidential information and trade secrets, publication strategies, etc. Eliciting invention ideas and disclosures from Company engineers. Preparing and prosecuting patent applications, including engagement with engineers and product managers. Managing outside counsel’s drafting and prosecution of patent applications. Identifying IP risks to Company businesses worldwide and managing them, where appropriate with IP attorneys, including protecting Company IP from infringement and avoiding infringement of third-party IP. Educating and training Company employees and contractors on IP issues; supporting the development and implementation of, and compliance with, internal policies and procedures. Preparing, obtaining, and analyzing patent searches and providing assessments on patentability, prior art, non-infringement and validity. Assisting with IP litigations, IPR’s, PGR’s and Reexaminations. Assisting with IP licensing, monetizing or other creation of tangible value from IP. Understanding and informing management regarding IP rights of competitors and third-party business partners. Maintaining expertise in patent laws of the US; demonstrating ability to work within a field characterized by much uncertainty; maintaining a working knowledge of patent laws, regulations and processes globally. Following and mastering relevant technology developments, both internally and externally; Supporting the development of budgets and exercising appropriate control over internal and external costs.

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