The Patent Attorney (PM/RPA) successfully assists the Deputy General Counsel – IP in the management of the company’s patent portfolio, docket, and the departmental processes through an understanding of patent law and the company’s IP objectives. This role is responsible for assisting in mitigation of risk of patent infringement lawsuits by conducting patent research for clearance analysis to identify violations of third-party intellectual property rights and assisting in creating solutions to potential patent infringement issues. This position is further responsible for assisting with identifying protectable assets and managing the patent application process to protect the company’s innovations and to help enforce the company’s patent rights.
PRIMARY RESPONSIBILITIES AND ESSENTIAL FUNCTIONS
Patent Portfolio & Process
- Assist the Deputy General Counsel – IP with managing and directing day-to-day operations of Kids II patent program, including the preparation and prosecution of patent applications, office action responses, clearance assistance, and other patent-related tasks and projects
- Helping the Deputy General Counsel – IP with managing a detailed docket of projects and workflow by prioritizing and delegating tasks, establishing goals, and assigning deadlines to optimize efficiency and ensure the timely completion of deliverables
- Exercise decision making in patent matters based on an understanding of current patent law, industry trends, the priorities of the company, and past precedents
- Conduct clearance research and assisting with analysis for new and updated products/features to mitigate the risk of patent infringement lawsuits
- Conduct invalidity research and assist with analysis to assess the validity of patents
- Conduct state-of-the-art research and assist with analysis to identify whitespace
- Assist in gathering information to assess patent infringement concerns and work with PD to engineer product solutions
- Collaborate with outside counsel to identify solutions and form legal recommendations for significant issues
Patent Application Preparation and Prosecution
- Gather information on competitor landscape and prior art to identify patentable aspects of new products
- Draft patent applications (provisional, non-provisional, design, continuation) for the company’s innovations
- Formulate strategic responses to Office Actions issued by the United States Patent and Trademark Office (USPTO) and foreign patent offices
- Carry out special USPTO procedures, such as interferences, third party submissions, supplemental exams, special petitions, broadening reissues, etc.
Kids II Patent Evaluation and Enforcement
- Evaluate competitor products for infringement of Kids II patents and advise internal lines of business on effective ways to enforce patent rights
- Analyze Kids II’s existing patent portfolio for enforcement opportunities
- Expand Kids II’s patent portfolio by identifying opportunities to further develop existing patent families
- Assist with enforcement of patent rights via Cease and Desist letters, lawsuits, other enforcement avenues
- Assist with advising product development team on proper patent marking for product packaging and marketing materials
- Assist with ongoing patent litigation, including preparing expert testimony, conducting prior art searches, creating claim construction charts, reviewing briefs, conducting Inter Partes Reviews and Post Grant Reviews
- Assist with additional legal matters, such as M&A due diligence and legal research
- Other duties and responsibilities as assigned
QUALIFICATIONS & EXPERIENCE
- 3-4 years of experience in patent drafting, patent prosecution, and patent clearance analysis.
- Experience with consumer products and/or retailer industry preferred.
- Have experience managing an IP portfolio.
EDUCATION & SKILLS
- Bachelor’s degree or equivalent work experience. Technical or engineering degreed preferred.
- Strong technical writing and analytical skills are required.
- High degree of efficiency and independence.
- Understanding of mechanical devices is essential.
- Assertive in making decisions
- Highest level of confidentiality and professional demeanor
- Work well under pressure
- Strong work ethic and an appropriate sense of urgency.
CERTIFICATES, LICENSES, REGISTRATIONS
- License/registration to practice before US Patent and Trademark Office is required
- Proficiency with USPTO website and PAIR system
- Proficiency with Microsoft Office
- Experience with 3D modeling software (e.g., Pro/Engineer, SolidWorks)
- Experience with CAD viewer software (e.g., ProductView Express)