Clairvolex Inc. is seeking a business management function to lead a business unit by planning and executing all items related to work, resources, quality, and client relationships. The person will report to the Business Head on all matters of business to ensure execution of the yearly goals as per the plan.
(Candidates must be open to travelling. Can expect at least 6 international travels and several domestic US travels every year. Preferred candidates who are willing to relocate the San Francisco or Salt Lake City. Social skills, networking capabilities, open to work in multi-cultural & diverse sensitivities and orientation.)
Job Responsibilities
A. Client Management:
This is a primarily a customer facing role. The candidate is expected to manage more than one strategic IPAM accounts. Each account will have 500-3000 patent applications (assets) under management. The management oversight will be run through a program management office PMO, led by candidate. This PMO shall directly interface with the portfolio development manager at the customer end (typically a patent attorney). Consequently, the following functions are critical to this role:
- Portfolio development strategy & articulation
- Designing & executing customer specific portfolio specific guidelines
- Timely customer communication
- Governance
- OC relationship
- Customer to EC knowledge transition
B. Asset Management:
- Oversee all prosecution functions for large scale application portfolios (1000+ assets)
- Tasks the team performs include both paralegal and patent engineer tasks.
• On the paralegal side: docketing, IDS management, invoice processing, form preparation.
• On the patent engineer side: drafting office action responses. This work is done independently, i.e., candidate must be able to oversee this with minimal intervention. - Ensure flawless delivery of product to OCs and clients
- Attend governance calls and manage all outside counsel
- Communicate with OCs and manage OC workflow
- Ensure technical background is appropriate to client work (a high tech background could not oversee a pharmaceutical portfolio)
- Perfect understanding of US prosecution process required. Knowledge of European process desirable. Knowledge of patent process in China, Korea, Japan, and India a plus.
C. 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.
D. 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.
Other Details:
Educational/professional qualifications: US Patent Attorney; Admitted to practice law in the United States and qualified US patent bar examination and eligible to practice patents before the USPTO. Must possess an EE degree from a reputed US university with deep course work on telecommunication technologies and JD from a well-credentialed law school.
Experience: 14-16 years of experience in an IP law firm or the patent practice of a general practice law firm. Should have handled a large volume of patent preparation and prosecution matters relating to electrical, communications, semi-conductors, microprocessors and computer software related inventions.
Contact
To apply, please email Abha Jaiswal at abha.jaiswal@clairvolex.com.
Additional Info
Employer Type: Small Corporation
Job Location: San Francisco, California or Salt Lake City, Utah