The Job Responsibilities
- Reporting to the Principal Attorney, North America Intellectual Property (NA IP), the IP Attorney will work with the various business stakeholders in developing and supporting the IP strategy for Draeger’s NA entities for its medical and safety business units.
- The IP Attorney will regularly communicate and collaborate with the research and development team to monitor ongoing projects and capture any potential inventions that can be protected by patenting or other forms of IP protection.
- Lastly, the NA IP attorney will also provide general IP counseling, including providing freedom to operate and patentability opinions, supporting any IP related litigation, preparing technology-related contracts or reviewing IP related provisions within commercial agreements, and providing legal advice on IP topics as issues arise.
- Develop a deep technical understanding of Dräger’s product portfolio, specifically medical device technologies in the fields of patient monitoring and neonatal care, and safety technologies in the field of gas detection. Using this technical understanding as a basis, conduct competitive landscape and Freedom-to-Operate analyses and present relevant findings to the NA IP and research and development teams.
- Prepare and prosecute certain patent applications internally, including coordinating communication between Dräger inventors, product managers, patent agents, and NA IP, for both US and international applications.
- Analyze correspondence, such as office actions, from the various patent offices and prepare responses to the office actions.
- Work closely with research and development teams to ensure sufficient ideas are captured and invention disclosures are generated.
Education: JD from an accredited law school. BS degree in Science or Engineering, preferably electrical or mechanical engineering, computer science, or software engineering or the equivalent education, training and experience.
- Minimal 1-3 years of experience in drafting and prosecuting patents for a law firm or technology company·
- Must have understanding of US and international patent laws
Special Competencies or Certifications:
- Member or Commonwealth of Massachusetts Bar
- Registered USPTO Patent Agent; familiarity with patent searching database; working knowledge of USPTO rules, regulations, and forms. Global patent experience is desirable.
- Able to use MS Office including MS Word, MS Excel, and MS Power Point
- Able to access the USPTO PAIR system for patent and trademark information
- Strong technical writing and oral communication skills
- Able to work in a cross functional setting
- Excellent interpersonal and communication skills
- Excellent organizational and analytical skills
- Able to manage numerous projects simultaneously
- Able to work independently
- Self-motivated and action-oriented