Patent Agent

Role & responsibilities:

The candidate will carry out the following typical tasks:

• Review invention disclosures and counsel inventors; conduct patentability evaluation, scoping of the inventive subject matter; prepare claims and full patent applications in line with business strategy.
• Handle patent prosecution, including preparation of responses to ISR/WO and office actions across jurisdictions, including reviewing prior art references and contextual comparison with the subject matter in line with business strategy.
• Hands-on experience and knowledge of US patent prosecution is desirable.
• Analyze competitive patent and non-patent literature to provide insight into a given field of product/technology, including right-to-market and landscape research.

SKILLS

• Possess excellent research and analytical skills
• Able to exercise judgment and to form an effective legal/technical plan aligned with business strategy
• Able to critically analyze complex information and think laterally.
• Solidly understand the substantive and procedural patent laws in major jurisdictions
• Have an excellent command of the English language and the ability to clearly and concisely communicate orally and in writing.
• Able to drive efficiencies within the role and to be a trusted member within the function and among peers.
• Enhance industry-specific understanding and assist in establishing best practices for matters related to patent preparation and prosecution.
• Able to collaborate and engage with team members and any other relevant stakeholders.

ATTRIBUTES AND BEHAVIOR

• Possess sound organizational and interpersonal skills and be a team player.
• Be both process-oriented and solution-oriented.
• Agile and open to everyday learning.
• Demonstrate trustworthiness and punctuality.
• Demonstrate the highest ethical standards and values.

QUALIFICATIONS, EXPERIENCE, AND SKILLS

Required:

• A Bachelor's degree in a relevant Engineering/Technology discipline or PhD/Masters in related Science as mentioned above from a reputed institute/ university.
• At least 8 years of substantive experience in handling patent prosecution, patent application preparation and patent analytics from a reputed law firm/IP consulting firm/in-house department.

Desirable:

Qualification of Indian Patent Bar

Preferred candidate profile:

We are seeking candidates with a strong academic background and at least 8 years of work experience from a reputable IP law firm, consulting firm, or in-house department. The candidate needs to be enthusiastic and keen on learning niche domains and cutting-edge technologies, as well as product portfolios and landscapes, to assist in patent-related matters. Candidates must be detail-oriented and have strong written and verbal English-language skills (working knowledge of Chinese is a plus).

Candidates must have strong experience in counseling inventors for the identification of inventions and appropriate scoping, patent application preparation and structuring of claims and variations, prosecution of applications with knowledge of patent laws and prosecution processes of major jurisdictions. Candidates need to work proactively and in close collaboration with the in-house team and stakeholders across the IP group function and R&D community to understand business strategy and to achieve the highest quality standards.