Position: Director, Patent Portfolio Development
Location: Bangalore, India
Employer: Clairvolex (India)
Industry: Intellectual Property and IP Asset Management
Reports to: Associate Vice President, Portfolio Development
Primer: 18-24 months of work assignment in India, after which the individual may relocate to one of Clairvolex’s US offices in Silicon Valley, Seattle, Salt Lake City or Philadelphia.
Overall Role Responsibilities:
Responsible for IPAM – Enterprise program:
- Lead, manage and train teams of patent engineers to build patent portfolios for large enterprise customers.
- Hands-on work profile, whereby the person is expected to work closely with patent engineers to prepare response to office actions from USTPO, EPO, JPO, SIPO, KIPO and IPO.
- Function as a mentor and guide, individually and collectively to the team.
- The Director, Patent Portfolio Development is expected to write specific office action responses and demonstrate the art and craft of patent prosecution to the team. (the drafting craft, the choice of words, sentences, crisp language, the legal brevity in distinguishing prior art references, how legal training, and legal methods reflect in the draft, the deep technical understanding of the claimed invention, the up to date familiarity with case law, the methods of citing precedents to substantiate arguments, and finally the experience in complying with the formal requirements of getting a patent application in condition for allowance).
Responsible to support IPAM – Elements program:
- Director, Patent Portfolio Development must demonstrate effective patent drafting and prosecution capabilities in the team by honing their language, technical, and legal skills.
- The training must inculcate the use of legal precedents and a deep technical understanding of the claimed subject matter to substantiate arguments during patent prosecution.
- Drafting patent applications, developing well-crafted claim set that conforms to US, EP patent legal and procedural standards, interviewing inventors, reviewing invention disclosure statements, drafting provisional specifications, overseeing draftsmen developing drawing figures, developing Industry-customer-technology specific IP strategies, and helping Elements Customers (primary interface will be CTO, Head of Engineering) execute the IP strategies.
- Team Leadership: This is primarily a team leadership role. The Director, Patent Portfolio Development, will lead an initial team of about 5 patent engineers and will be responsible for work product quality of patent application drafts and office action response drafts of the team. The Director will also be responsible for meeting all associated deadlines.
- Coordination: The Director, Patent Portfolio Development, will work with and coordinate all activities of patent portfolio development within the team and with paralegal teams. In addition, the Director will liaise with customer-specific Program Management Office to manage and exceed customer expectations.
Educational qualifications: Must possess a Juris Doctor degree from a reputed law school. Must possess at least a bachelor’s degree in EE, CS, Physics, or similar field.
Experience: At least 4 years of experience at an IP law firm or in the patent practice of a general law firm. Needs to have handled a large volume of patent preparation and prosecution in the fields of telecommunications, software, semi-conductors, microprocessors, and electrical engineering.
Specific Task Responsibilities:
- Asset Management
- Oversee all prosecution functions for multiple clients, totaling over 1,000 assets.
- Oversee team functions, including patent engineer functions (patent application preparation and prosecution) as well as paralegal functions (docketing, IDS management, invoice processing, and form preparation).
- Ensure flawless delivery of work product
- Attend governance calls
- Support Program Management Office -- Candidate will work closely with Program Management Office to provide
- Customer-specific strategy and articulation;
- Customer-specific portfolio guidance and process development;
- Timely delivery of all work; and
- Communication and governance of outside counsel relationships.
- Quality Control -- Candidate will be responsible to:
- Ensure all work is delivered at the highest levels of quality;
- Provide specific feedback and mentor-ship to patent engineers; and
- When necessary, candidate will need to participate in drafting applications and/or office action responses.
- Training -- Candidate will be responsible to
- Provide on-going training and assistance to team members for patent prosecution in US and foreign jurisdictions;
- Develop training materials to train patent engineers; and
- Provide training and support to paralegal team
To apply, please email email@example.com.
Employer Type: Other
Job Location: Bengaluru, India