1. Develop patent portfolios for client groups in key areas of interest.
2. Meet with Management, Engineers and Marketing personnel in client groups to get involved strategically and understand how IP can support their goals and objectives;
3. Develop, implement and maintain IP Strategy for Business Units, key products and areas of interest.
4. Develop, implement and continuously improved Best in Class procedures and systems for IP management.
5. Focus on initiative, driving innovation, and customer service
6. Support Finance and Legal with agreements related to your support areas in order to help ensure IP interests are protected and proper payment of royalties are made over time.
7. Review invention disclosures and guide patenting decisions;
8. Liaise with outside counsel in preparation, filing and prosecution of patent applications;
9. Investigate development status, plans to commercialize inventions, novelty, etc. to support decisions to file corresponding international patents.
10. Analyze and work with internal stakeholders and outside counsel to respond to Office Actions;
11. Investigate patent utilization, commercial offensive and defensive value to help make decisions to maintain or abandon patents;
12. Initiate patentability, right to use, and state of art patent searches;
13. Support and participate in all patent assertions and defenses.
ò Bachelors of Science Degree in Electrical, Mechanical or Biomedical Engineering or similar scientific discipline with demonstrated experience in commercial intellectual property management.
ò Will also consider licensed Patent Attorney or Patent Agent with demonstrated experience in commercial intellectual property management.
ò 5+ yearsÆ experience in development and research in the medical device industry or other appropriate, related industry;
ò Demonstrated expertise in the design, clinical use and history of medical devices;
ò Demonstrated expertise in the function, clinical issues and performance requirements of medical devices;
ò Prefer applied understanding of USPTO patent prosecution processes;
ò Demonstrated ability to perform IP searches;
ò Demonstrated verbal and written communication skills;
ò Demonstrated ability to influence others;
ò Demonstrated ability to be effectively/appropriately assertive in order to challenge concepts and inspire innovation;
ò Demonstrated ability to work independently,