The Kudelski Group (the “Group”) is looking for a Registered U.S. Patent Agent with a strong technical background in the computer sciences and software technology to join the Kudelski Intellectual Property and Innovation (“KIPI”) team. The patent agent will work closely with KIPI’s patent attorneys to support KIPI in implementation of IP strategy for the Group and assist in worldwide protection and support of the Group’s IP and innovation. A successful candidate will have experience capturing inventions, drafting and prosecuting patent applications, and communicating with technical and business clients and partners. The patent agent needs to thrive in a complex, fast-paced, and dynamic business environment, and also enjoy collaboration and teamwork with fellow patent professionals and business partners.
Reports to: Senior Patent Counsel
Travel: 10%, domestic, possible international travel 1-2x year
Primary Responsibilities:
- Develop a deep understanding of the Group’s various technologies (cybersecurity and video content management, security and delivery), market players, services, and providers.
- Conduct innovation and invention disclosure sessions with inventors worldwide to drive innovation and capture inventions arising out of the Group’s businesses and technologies.
- Assess invention disclosures and conduct prior art analysis to develop invention disclosures and select for submission to patent committee.
- Participate in regular patent committee meetings to review invention disclosures and make patent operational decisions with technical leads and KIPI members serving on the committee.
- Stay current with patent law changes and support development, maintenance, and education of best practices for US and worldwide patent systems.
- Review and manage outside counsel following outside counsel guidelines and budget for preparation and prosecution of patent applications.
- Manage office actions, foreign filing decisions, appeals, continuations, new filings, and occasionally draft applications to ensure compliance with varying global patent prosecution and enforcement systems.
- Assist in implementing on the patent strategy for mitigating patent risk and leveraging the patent portfolio to meet business goals.
- Participate in and drive processes for strategic and quality review of preparation and prosecution of patent applications.
- Support case development for licensing and patent litigation in support of competitive threats and targets within the scope of IP strategy.
- Assist in analysis of applications/patents being considered for use in licensing, acquisition, or divestiture.
- Oversee implementation and expansion of inventor recognition program.
- Ensure Group maintains a “Best in Class” asset management process with excellent results.
Essential Traits:
- Self-starter who can work well as part of a cross-functional team based around the world.
- Excellent communication skills, the ability to work with various levels of management, strong analytical skills, and detail oriented.
- Strong organizational skills, e.g., maintaining attention to detail on multiple projects simultaneously, and the ability to adjust to changing priorities and deadlines.
- Capacity to proactively isolate and prioritize issues and to focus on implementing both top-level, strategic solutions as well as the day-to-day initiatives.
- Ability to quickly assimilate and understand complex situations and information, including highly technical information.
- Able to quickly establish credibility, respect and trust with internal clients/stakeholders and external service providers and business partners.
- Strong sense of ownership, integrity and courage of conscience.
Required Qualifications:
- B.S. in Computer Science, Computer Engineering, Electrical Engineering.
- Exposure and/or passion to learn the Group’s technologies including video content delivery, video security (e.g., DRM, conditional access), and cybersecurity.
- Solid understanding of U.S. patent laws and USPTO procedures.
- Proficiency with USPTO electronic systems (PAIR, PatFT, EFS Web).
- Possess qualifications and desire to sit for the USPTO Patent Bar examination for registration as patent agent.
- At least 1-2 years of patent preparation and prosecution experience of software applications.
- Exposure to foreign patent laws and/or patent office systems.
- Fluency in English language and excellent communication skills, particularly written communication skills.
- Proficiency with MS Office Suite (Word, Excel, PowerPoint).
- Experience conducting invention disclosure/harvesting/mining sessions with inventors.
Preferred Qualifications:
- Advanced graduate degree in Computer Science, Computer Engineering, Electrical Engineering.
- Solid technical knowledge, industry experience, and/or education in the Group’s technologies including video content delivery, video security (e.g., DRM, conditional access), and cybersecurity.
- Registered or pending registration as patent agent with the USPTO.
- At least 1-2 years of practice supervising and/or providing strategic guidance in the preparation and prosecution of applications in foreign jurisdictions, in particular with Europe jurisdictions.
- Knowledge of foreign patent laws and/or patent office systems, preferably European patent laws and European Patent Office (EPO) procedures.
- At least 3-4 years of patent preparation and prosecution experience of software applications, preferably experience involving the technologies aligned with the Group’s business.
- At least 1 year of experience independently conducting invention disclosure/harvesting/mining sessions with inventors.
- Experience assessing invention disclosures for patentability.
- Experience conducting prior art analysis for patentability, and/or patent infringement or validity.
- Fluency in French is beneficial.
- Language Skills:
English language fluency is necessary; French is beneficial
Benefits:
- Market competitive compensation package (salary + bonus)
- 401(k) + company match
- Medical, dental, vision, life and disability insurance
- Pre-tax benefit programs + other voluntary insurances
- Robust online training opportunities
- Generous time-off policies
Contact
To apply, please visit this link: https://careers.nagra.com/?page=advertisement_display&id=10854.
Additional Info
Employer Type: Large Corporation
Job Location: San Francisco, California