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Patent Attorney - Engineering/Science - Cambs
 
Title: Patent Attorney - Engineering/Science - Cambs
Category: Other
Job type: Permanent
Job status: Full Time
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Description:
My clients in Cambridgeshire are looking for a Patent Attorney - Materials Science/Engineering.

This role is commutable from Cambridge, Bedford, St. Neots, Huntingdon, Sandy, Yaxley.

My client's R&D centre is currently working on a wide range of exciting research topics including: Displays, Organic Photodiodes for x-ray and sensors, Organic Electronics, Bio-Sensors, Energy Harvesting and Storage, as well as OLED Lighting, at levels ranging from fundamental understanding to optimising materials and devices for market applications.

Their IP team provides world-class solutions to support the growth, competitiveness and profitability of their businesses. For this purpose, the IP team aims to create and maintain a strong IP portfolio and consequently to generate maximum value from it for the business.

The Patent Attorney will ensure that:

- IP strategies are created and maintained for each company project in close collaboration with the technical experts and the Business Developers

- IP strategies are supported by a full range of IP activities: IP Creation, IP Clearance, IP Counselling, etc.

MAIN ACTIVITIES:

- To engage with the R&D project teams on a regular basis by attending team meetings, assisting inventors with the development of new ideas and transforming these into Invention Disclosure (ID) submissions.

- To support the development and maintenance of R&D project IP strategies.

- To engage with inventors to achieve timely and high quality patent application filings.

- IP Creation:

o Supporting invention disclosures (IDs) creation within the project teams.

o Usage of TRIZ innovation method for enhancement of IDs.

o Providing highest quality patent applications that are closely related to company business objectives (using Patent Drafting Guidelines).

o Creating an IP Portfolio that consists of an optimal mixture of various IP types: Patents, Trade Secrets, Know-How, Copyrights, etc.

- IP Clearance:

o Creating IP Landscapes that will be used for confirmation/fine tuning of the business cases.

o Executing FTO analysis, and when IP risks are identified, preparing the risk mitigation strategies/options.

o Creating IP to be used to ensure a power-balance with (potential) competitors' IP.

- IP Counselling:

o Providing support and advice on various IP matters within a project.

o Giving advice on IP terms in contracts with third parties.

- To drive the design, implementation and improvement of IP procedures and processes.

- Facilitate the strategic management of the IP portfolio, ensuring that the best patents are identified and handled with special care, while low value patents discontinuation should be considered.

- To manage part of the patent portfolio, looking after prosecution related activities in a cost effective and efficient manner. Such activities include:

o Preparation of patent applications for initial filing, PCT and national phases, including drafting of the patent applications;

o Preparation of arguments and claim amendments for responses to patent office actions;

o Conduct of matters under appeal;

o Conduct of matters under opposition;

o Filing of divisional patent applications;

o Filing of requests for continuous examinations;

o Reviewing/responding to search reports;

o Payment of annuities;

o Providing emergency cover for administrative tasks.

- To assist with the education of staff, in particular the R&D community, to understand:

o The highest-level importance of IP within the company; and

o Their responsibilities to maintain proper records of creative and research/development activities, and to promptly submit invention disclosures for potentially patentable inventions.

- To actively participate as a member of the Patent Review Committee (PRC) whose remit is:

o Evaluation of invention disclosures;

o Evaluation of competitors' patents;

o Development of the company position on third party patents;

o Ensuring that patent protection is sought in a variety of countries depending on the perceived importance of the invention disclosure, as determined by the PRC;

o Giving priority to invention disclosures which are perceived to create real commercial value.

- To co-ordinate portfolio management activities with those of the parent company by:

o Improving the sharing of information on the IP portfolio;

o Filing of patent applications to avoid collision of subject matter.

- To collaborate with senior management on all IP matters arising from:

o Existing third party agreements;

o Proposed third party agreements.

KNOWLEDGE, EXPERIENCE AND SKILLS REQUIRED:

- A first degree in a relevant discipline, for example, Physics or Organic Chemistry and preferably a further degree (or equivalent experience).

- At least part-qualified as a European Patent Attorney and/or as a UK Chartered Patent Attorney.

- Relevant work experience as a Patent Attorney, gained within private practice or industry.

- A strong understanding of Intellectual Property, especially relating to patents, including extensive experience of drafting and prosecution before major patent offices including the EPO, UKIPO, USPTO and preferably also the JPO and SIPO.

- The ability to show initiative, independence of thought and an autonomous and proactive approach.

- Outstanding communication and interpersonal skills and a good command of the English language.

- A professional, creditable approach.

- An ability to maintain a level of professional confidentiality at all times, relating to the sensitivity of information/data handled.

- Ability to work to deadlines and excellent time management and prioritisation skills.

- Meticulous attention to detail.

Salary circa £50-65k per annum but flexible for the right candidate.

To apply for this Patent Attorney - Materials Science/Engineering role in Cambridgeshire please contact us ASAP!
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