Responsibilities
• Processing invention disclosures, including determining an appropriate intellectual property protection strategy and prosecute patent applications that thoroughly and accurately protect all inventions of Bert Labs.
• Conducting study for Internal IPR projects, planning, scoping, estimation, tracking & implementing project plans within deadlines.
• Handling of patent searches, analysing prior art searches, drafting, filing, prosecution, freedom-to-operate opinions and Allied matters.
• Attending to Examination reports and Office Actions and attending hearings at the Indian Patent Office independently.
• Assisting in Patent Oppositions and providing technical support to the litigation team through research and analysis of recent cases etc.
• Shepherding and making all patenting decisions, in coordination with the participating inventor and CEO. Taking decisions on international filing and prosecution, Patent analysis & Claim charting.
• Coordinate with all outside patent counsel related to patent filings and prosecution and oversee all inventor’s meetings related to those processes.
• Liaison with government bodies and Industry organizations in India and helping in framing IPR policies and creating IPR awareness.
• Day-to-day management of the IP portfolio, its maintenance and docketing.
• Lead development of a robust IP legal services infrastructure.
• Managing Other IP (Designs, Trademarks and Copyrights)
Qualifications
• Having a minimum of 10+ years of post-qualification experience, preferably in an OEM, global MNC or a reputed law firm.
• Eduction: B.E/B.Tech/M.E/M.Tech, Ph.d (Electronics/ Computer Science/ Electricals/ Mechanical/Telecommunication/Mechanical) from a reputed institute
• Registered Patent Agent.
• India/Us Law Degree (Bachelors/Masters)
• Excellent understanding of technologies including, Artificial Intelligence, Internet of Things, Embedded Electronics, etc
• Excellent skills for analyzing prior arts, distinguishing novel and inventive features, drafting arguments, claim amendments, etc.
• Excellent knowledge of Indian patent laws and hands-on experience of interacting with the Examiners/Controllers and conducting hearings.
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