I.P. Attorney / Patent Agent – Large Corporation – New Bern, N.C.

BSH Home Appliances Corporation is seeking applicants for Intellectual Property Attorney/Patent Agent to provide both independent and collaborative work in the field of intellectual property rights; for creating, establishing and expanding a strong BSH intellectual property portfolio; and counseling all levels of the business on strategic intellectual property matters.

Responsibilities

  • Handles acquisition of inventions, evaluation of inventions, maintaining contact with inventors; check work results of all BSH divisions for patentability and implement suitable results into invention reports in order to establish and expand a strong patent portfolio
  • Performs product clearing in order to avoid infringement of competitive intellectual property rights by BSH products.
  • Regularly meets with product development managers, manufacturing engineering managers, and inventors to educate and counsel on patentability and infringement issues in their daily work and to update on status of currently pending patentability opinions, patent applications, and freedom-to-operate opinions.
  • Regularly meets with Industrial Design department to acquire design invention disclosures; to perform design patent clearance work; to educate and counsel on intellectual property issues relating to industrial design work; and to update on status of currently pending design patent applications and design patent clearance work.
  • Drafts utility and design patent applications and responses to Office Actions from the US Patent and Trademark Office.
  • Manages outside counsel as necessary for quality control of draft patent applications and responses to Office Actions prepared by outside counsel.
  • Provides IP intelligence services.
  • Handles external invention offers.
  • Performs evaluation of the BSH IP portfolio in patent committees Manages IP proceedings before the US Patent and Trademark Office and federal and state courts.
  • Oversees infringement proceedings; evaluation of infringement; performance of infringement proceedings.
  • Oversees IP proceedings before competent authorities and courts to defend against third-party claims regarding intellectual property rights.
  • Handles contractual activities; negotiation and preparation of confidentiality, development, cooperation, license, and differentiation agreements with competitors, development facilities and suppliers in cooperation with the purchasing and product development departments in order to continually expand the know-how that is used by and protected for BSH.
  • Handles inventor remuneration issues.
  • Reviews daily filings with U.S. Patent and Trademark Office prepared by paralegals.
  • Follows IP case law, PTO developments, and IP legislation.
  • Periodically reviews and updates legal documents (i.e. Declarations and Amendments).

Requirements

  • JD from ABA-accredited law school and admission to state bar (does not apply to the Patent Agent track).
  • Must be a registered patent attorney or patent agent with a USPTO qualifying technical degree.
  • 4 or more years of in-depth experience in protection of patent rights.  Must have worked with engineers to obtain disclosures and have made patentability opinions.
  • Must have either in-house or top-tier law firm IP experience, and ideally a mix of both
  • High motivated, pro-active, ability to organize a heavy workload, and demonstrate excellent analytical abilities.
  • Strong customer/client service mindset
  • Excellent interpersonal skills with the ability to relate comfortably at all levels within the organization, and with multi-national personnel from a variety of cultures, backgrounds, and locations; must be comfortable discussing technical issues with engineers.
  • Strong team player with a healthy sense of humor
  • Outstanding communication skills, both written and oral; German language ability a plus
  • Must be willing to travel on occasions (within the United States and abroad).
  • Extensive knowledge of patent prosecution procedure.
  • Clear understanding of PCT and international patent prosecution
  • Good understanding of technology and willingness to learn any necessary technology.

BenefitsWe offer a comprehensive benefits package including paid vacation, holidays, medical, dental, vision, life insurance, disability insurance, educational assistance and 401(k) plan. This position is eligible for the BSH Associate Referral Program.

EOE / AA Employer
We participate in E-Verify

Contact
To apply, please visit this link: https://chc.tbe.taleo.net/chc01/ats/careers/requisition.jsp?org=BSHHOME&cws=1&rid=2509.

Additional Info
Employer Type: Large Corporation
Job Location: New Bern, North Carolina

BSH Home Appliances Corporation aims to make life easier with our products under the brands Bosch, Thermador, and Gaggenau. An international group with annual revenue of over 12.6 billion Euros in 2015 and more than 56,000 employees, we inspire through high quality product design, resource-efficient technology, and an excellent working environment. As a company of the Bosch Group, BSH offers you a wide range of career opportunities. Get ahead with your career - think ahead with us.