Leader, Senior Counsel - Patent Counsel job in Evendale, OH| Recruit Arrow
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Leader, Senior Counsel - Patent Counsel
Location : Ohio, Evendale
Refer job # GJKU339717
Job Responsibilities and Requirements: Essential Responsibilities: Provide strategic counsel in identifying and developing high quality patent assets that encompass the foundation of Aviation s technological differentiation in the marketplace, and take ownership of IP strategies focused on protecting that competitive advantage; Harvest new inventions, review invention disclosures, and partner with Aviation s patent evaluation boards in making strategic decisions on allocating capital for maximizing the strengths of Aviations IP portfolios; Lead the preparation, filing, and prosecution of U.S. patent applications, working closely with inventors, business leaders, and other members of the Aviation IP Team to develop high quality application content and strategic claim scope; Prepare responses to Office Actions and make patent application secondary filing decisions that maximize the scope of protection in view of Aviations strategic goals and capital allocation priorities; Oversee the quality, efficiency and effectiveness of patent preparation and prosecution activities carried-out by Aviations preferred providers/outside counsel; Direct the procurement of patent applications filed internationally; Lead and participate in initiatives for increasing productivity and enhancing quality in the protection of Aviations IP assets. Qualifications/Requirements: Juris Doctorate from an accredited law school. At least 5 additional years of legal experience. Must be registered to practice before the U.S. Patent and Trademark Office (USPTO). Must be a member in good standing of the bar of at least one U.S. state. Desired Characteristics: Aviation invests hundreds of millions of dollars in R&D every year, and files and maintains hundreds of patent applications annually in countries around the world to protect the value of those investments. As a result, the successful candidate will be a self-starter eager to partner with the business team to devise and execute global strategies for obtaining patent assets that have maximal impact for the business. Experience understanding important details of, counseling on, and managing large patent portfolios is a must, as is the ability to lead and direct outside counsel and support foreign filing activities. Other desired characteristics include: Bachelor of Science or Master of Science degree in electrical engineering or computer science is preferred, though degrees in physics, and other hard sciences combined with significant software background may be considered. A minimum of 3 years of experience drafting and prosecuting U.S. and global patent applications in the electrical and/or computer science fields. Have a demonstrated understanding, command, and continued engagement with U.S. patent laws and regulations, U.S. Patent and Trademark Office practices and procedures, Paris Convention rules and Patent Cooperation Treaty rules and practices; Demonstrated ability to work effectively independently, with other IP counsel, with management, and with business teams in managing global patent portfolios and strategies that advance business objectives and goals; Knowledge of laws, regulations, practices and procedures relating to procurement of patents in countries other than the U.S.; Experience with establishing and controlling budgets, costs and expenses relating to patent procurement; Facility with working collaboratively to solve complex IP problems; Demonstrated thought leadership, organizational skills, and business judgment; Strong interpersonal and oral communication skills, charisma, decisiveness, poise.
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