Clairvolex, a rapidly growing IP asset management company that helps global IP owners build smart patent portfolios, is looking for a US patent attorney/well-experienced patent agent for an expat role at its global delivery center near New Delhi, India.
The successful candidate will be responsible for managing, training, and mentoring our team of patent agents on various prosecution and portfolio management activities. Quality oversight, development and compliance of portfolio development guidelines, customer communications, team-efficiency, process development are also key responsibilities of the role.
Eligible candidates include qualified USPTO-admitted patent attorneys or patent agents with 8+ years of experience preparing, prosecuting, and managing patent portfolios in hi-tech industries (telecommunications, semiconductors or enterprise software). Although not required, prior in-house experience as patent counsel will be an added advantage.
The role carries attractive remuneration commensurate to an overseas assignment and other benefits. Upon completion of two years in the expat role at our India delivery center, the candidate will have the option to relocate to one of Clairvolex’s offices in the United States (Silicon Valley, Philadelphia, or Salt Lake City).
This position will be responsible for patent prosecution oversight in general, and more specifically supervision and quality control of the production of U.S. and EPO office action responses. Manage outside counsels for legal functions connected with filing office action responses, Examiner interviews and legal steps relative to allowance. The person will hands-on coach, train and mentor engineers in all aspects of US patent preparation and prosecution, and in particular the following:
A. Quality Oversight and Team Mentoring
- Review and quality control responses to offices actions issued by USPTO and drafted by the Patent Engineers.
- Wherever necessary, and in complex cases, hands-on draft office action responses.
- Responsible for instructing the US outside counsels in regard to filing response to office actions, Examiner interviews, preparing and filing continuations, and matters connected with prosecution of US patent applications until grant.
- In conjunction with the European Outside Counsels, review and supervise the responses to office actions issued by the EPO and drafted by the Patent Engineers.
- Train, coach and mentor patent engineers to write high quality office action responses.
- Offer technical support, subject matter expertise and portfolio development strategy advice to the team.
- Develop training materials and offer training to Clairvolex employees, and patent engineers in particular.
- Support through rendering subject matter expertise to the IPMS (IP Management Service) team – a large group of paralegals handling a variety of functions for multiple large in-house corporate IP operations.
B. Business Support & Client Relationship
- Responsible for customer relations management relative to prosecution functions.
- When required travel to client facilities for on-site reviews.
- When required attend potential customer meetings and reviews.
- Contribute to CLRC (Clairvolex Learning & Research Center) occasional articles, research papers and/or research in-put (not-mandatory).
- Provide business support including by offering online presentations, attending conference calls to render presentations on service lines and related processes, making client specific proposals, obtaining client references (if and when specifically required) and providing case studies.
If interested, please apply with a copy of your resume and a cover letter addressed to: Abha Jaiswal Head, Global Talent Acquisition Clairvolex firstname.lastname@example.org
Employer Type: Small Corporation
Job Location: New Delhi, India and Silicon Valley, California; Philadelphia, Pennsylvania; or Salt Lake City, Utah