US, York, SC Patent Agent / Intellectual Property Specialist 2021-22
As part of the growth we are experiencing, we are adding the new role of Intellectual Property (IP) Specialist to our team. The IP Specialist will be part of the Global Patent and Competitive Intelligence Team. They will manage Patent and Competitive Intelligence for the Americas Region involving different Research and Innovation (R&I) technology platforms.
The IP Specialist is responsible for preparing, filing and prosecution of U.S. and foreign patents, They must keep themselves up to date with various government rules and regulations related to intellectual property. We are seeking a team player who can collaborate with various functions as needed toward the achievement of the group’s goals. This position is expected to continuously identify ways to improve the quality of services and products offered to internal and external customers. Additionally, they are expected to act with integrity and must observe confidentiality.
The incumbent in the Intellectual Property (IP) Specialist role is responsible for protecting Elkem’s intellectual property. The incumbent must conduct thorough research on existing patents, so that Elkem creations do not infringe on others’ patent rights as well as perform infringement analysis to make sure that other companies or people do not infringe on Elkem’s inventions.
Qualified candidates provide considerable knowledge of legal procedures and terminology and must demonstrate the ability to follow complex instructions and work on his/her own initiative under limited supervision.
Key Responsibilities include:
- Identify patentable inventions through regular interactions with Americas R&I team including support prior art searches & analyze invention technical characteristics.
- Draft and file patent applications in the USPTO and sometimes in EPO or CNIPA in collaboration with regional patent team, directly or through outside counsel.
- Prosecute patent applications in the US and abroad (EP, CN, KR, JP) directly or through outside counsel.
- Participation in opposition cases before the EPO.
- Manage selected program global patent portfolio and Americas regional patent portfolio in collaboration with global patent portfolio leaders
- Perform freedom to operate searches and opinions for new products/processes.
- In case of litigation, provide legal advice and validity opinions.
- Support America’s cross-market prioritization and sequencing of IP work.
- Monitor and analyze competitive intellectual property based on weekly patent survey aligned to prioritized markets and technologies. Organize exchange meetings and share highlights with CI global leader
- Review proposed publications for impact on patentability & confidentiality issues
- Provide legal advice and support for agreements (collaboration, NDA, MTA, business…) in collaboration with US legal counsel
- Educate colleagues on patent processes and issues.
- Minimum of Bachelors degree in chemistry plus minimum of 5 years of related patents experience in an international environment, or Masters Degree and 3-5 years of related experience
- USPTO Patent Agent or European Patent Attorney Qualification
- Experience in patent work in a law firm or in-house, preferably in a manufacturing environment
- Experience as USPTO Patent Agent or European Patent Attorney desired
- Knowledge in preparation of all Patent/Trademark Office forms
- Must understand USPTO time requirements clearly. They must be proficient with patent search engine and relevant software.
- Proven oral, written, and listening communication skills to ensure understanding in order to analyze and advise on patent & IP matters
- Strong organizational skills, having experience maintaining correspondence and documents using the relevant document management system
- Region: North America
- Division: Silicones
- Job type: R&I
- Working hours: Full Time
- Working days:
- Application deadline: 31.01.2022
- Location: York, SC