- 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.
- 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
- 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