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