Lead - IPR - Manufacturing

Our client, a global leading manufacturing company, is looking to hire an Intellectual Property Attorney (IPR). Candidate should be a registered Patent Agent with the Indian Patent Office with a minimum of 10-14 years. Open to considering candidates with an engineering background.

Roles and Responsibilities:

- Advise on Patentability - including evaluating inventions with inventors and Freedom to Operate - including analyzing issued or pending patents to assess whether a product / process may be considered to infringe any patent(s) owned by others.

- Patent drafting and filing and specifications (detailed descriptions) covering techno-legal aspects of patentable inventions. Review changes suggested by inventors. Suggest modifications or extensions to the definition of the invention. Preparing responses to examination reports from patent examiners, managing hearings before patent examiners and preparing responses.

- dvise on white-space analysis - including preparing reports of existing, granted and filed patents and informing the inventors/designers of a space which can be explored further for development of new products, services and processes.

- Conducting Trademark Availability Searches and providing advisory to business of registration on TM

- Registration of various Trademark in India and across globe and coordinating with business and external advocates

- Promptly conducting Trademark watch in Trademark Journals taking action against similar trademarks. Coordinating with external lawyers for watch services across globe. TM Oppositions and Proceedings Management

- TM Renewals

- Managing the entire portfolio of TM and updating MIS. Drafting IPR license / assignment deeds

- Conducting comprehensive FTOs , advising business on Design Registrations. Ensuring registration of designs coordinating with internal and external stake holders and design Prosecution Management o Timely Renewals of designs.

- Managing different IPR portfolios, such as Patent, TM, Industrial Design, Copyrights. Updating records / MIS and tracking from time to time. Life cycle management of IPR portfolio and archival and retrieval of IPR documents. Conducting IPR awareness training.

- Acting on leads provided by external agencies/ business / various sources and promptly initiating action. Conducting raids through external agencies. Developing information network reporting counterfeit activities. Preparing reports based on the feedback of raid provided by the external agency and submitting internally.