Director of IP Department
Job Description
Profile
Candidate shall possess:
- Ability to search and study ideas from engineers and turn them into patent applications
- Proven track record
- Strong technical or engineering skills
- Capability of writing a patent in English language
- Ability in building and enforcing defensive positions vis a vis litigation opponents and other third parties IP claimants
- Proven track record
- Experience in licensing patents
- Expertise in IP laws and patenting process
- Both for Europe (EPO) and for the US
- Preferably from a TV related or close technical domain
- High level of energy
- Complemented by curiosity and a proactive approach
- Hands on things approach
- Strong communication skills
- With engineers
- With patent attorneys and lawyers
- Team management
- Perfect command of the English language
- A plus
- Knowledge of Polish language
- Practical knowledge of the European Patent Convention and the Patent Cooperation Treaty
Essential Functions
- Work closely with top management to stimulate the patent generation and filing process
- Engineering departments are monitored and searched for patentable ideas
- Ideas are screened and assessed by the Patent Committee
- Committee is chaired by the EVP strategy and Technology
- Director of IP department shall organize and be the secretary of the Patent Committee
- A significant amount of patent filings must take place every year
- Patent applications are drafted and prosecuted, including supervising the activity of other IP team members and outside patent attorneys
- Build an IP Strategy and manage the portfolio of patents
- review existing patents - decision to maintain, drop or license
- study of licensing options available
- pursue (negotiate) the ones approved by top management
- Provide advice and counseling on all aspects of IP
- Patent prosecution: help to decide whether or not to seek patent protection. Negotiate the licensing agreements on suitable terms and conditions, notably for royalties and license fees.
- Review and negotiate the IP aspects of commercial agreements
- Infringement opinions: advise upon infringement avoidance, assist in the development of "engineer work around options,"
- Handle opposition proceedings, and where required, co-operate with legal counsel in connection with these actions
- Supervise IP activities of the team or external counsels
- Patent/Registered rights search
- Search patent information databases for novelty and infringement assessment purposes (prior art) in connection with new inventions and development projects
- IP trainings: prepare and deliver IP training in the form of seminars or presentations for engineers, sales and marketing managers and senior management.
Education
- Degree in a suitable technological discipline
- At least 5 years – preferably 10 years - post qualification experience, preferably in industrial practice
- European Patent Attorney qualification and/or a corresponding European national professional qualification
Location
- Open (ideally Poznan, Poland)
- Travel to other company locations – notably where engineers are located (Poland, Ukraine, Italy)
Please submit your application, including your Curriculum Vitae, via E-mail to: m.vulliez (at) adbglobal.com
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