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Patent Engineer for a SW company based in Lausanne

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  • Primary responsibilities: Possess foundational knowledge necessary to develop a deep understanding of the Group’s various technologies (cybersecurity, Internet of Things, video content management/security/delivery, market players, services, and providers).
  • Drive innovation and capture inventions arising out of the Group’s businesses and technologies.
  • Conduct innovation and invention disclosure sessions with inventors in Europe and worldwide.
  • Assess invention disclosures and conduct prior art analysis to develop invention disclosures and select for submission to the patent committee.
  • Participate in regular patent committee meetings to review invention disclosures and make operational decisions with the 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 European Patent Office (EPO) 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 portions of applications and/or claims to ensure compliance with varying global patent prosecution and enforcement systems.
  • Participate in and drive processes and best practices designed to strategically prepare and prosecute high-value 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.
  • Ensure Group maintains a “Best in Class” asset management process with excellent results.
Required qualifications:
  • BS or equivalent in Computer Science, Electrical Engineering, or a comparable amount of work experience in those fields.
  • At least 1-2 years of practice supervising and/or providing strategic guidance in the preparation and prosecution of applications in foreign jurisdictions, aside from EPO and unitary patent.
  • At least 8 years of patent preparation and prosecution experience of software applications
  • Deep knowledge of EPO and unitary patent practice and procedures.
  • Knowledge of foreign patent laws and/or patent office systems, preferably European patent laws and European Patent Office (EPO) procedures, including unitary patent and related procedures.
  • Exposure to foreign patent filing and prosecution (outside EPO and unitary patent).
  • Fluency in English language and excellent communication skills, particularly written communication skills.
  • Proficiency with MS Office Suite
Preferred qualifications :
  • At least 1-2 years of practice supervising and/or providing strategic guidance in the preparation and prosecution of applications in foreign jurisdictions, aside from EPO and unitary patent.
  • Knowledge of foreign patent laws and/or patent office systems, preferably European patent laws and European Patent Office (EPO) procedures, including unitary patent and related procedures.
  • At least 2-3 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
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Votre consultant

Laurent Sauté

Managing Director
Zurich

5 rue des Marronniers
1207 Genève

+41 (0)78 666 41 85

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