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In-House
Attorney
Computer Science
Electrical Engineering
Mechanical
Physics
Min 5 yrs required
Patent Counsel Duties: Reports directly to the Head of Intellectual Property, who in turn reports to the Chief Technology Officer. Focused on supporting the product category, which is spread across multiple Business Divisions, but it may support, from time to time, other product categories as well, including the Handheld product category. Works with the product category’s R&D team and product managers to develop global patent strategies for the category, identify and protect patentable and commercially valuable inventions, identify and mitigate patent infringement risk, and monetize the Group’s patent rights through enforcement and licensing. deeply embedded in the business strategy and day-to-day work of the product category. Works together regularly with the rest of the IP team, including a Patent Paralegal responsible for supporting the Patent Counsel. Identifying innovation focus areas and creating global patent strategies in co-operation with Product Management & Development and IP management. Providing internal training to key persons in order to spread knowledge about IP as a business asset and tool. Visiting and supporting R&D and other business facilities and participating in project meetings to review the R&D activity, identify and protect new inventions, and identify potential patent infringement risks. Harvesting invention reports from R&D and processing them according to internal policies and procedures. Leading patent review meetings to decide with the product and R&D managers how each invention will be protected and how any potential patent infringement risks will be mitigated. Providing IP intelligence to the business in the form of patent landscape investigations, competitor watching programs, state-of-the-art investigations, patent infringement investigations, etc. Performing patent clearance/freedom-to-operate investigations and design-around assistance. Drafting and prosecuting patent and design applications and preparing appeals, oppositions, re-examinations, etc., both in-house and by outsourcing to external agents, in accordance with Husqvarna’s procedures. Managing outside counsel globally and working within a budget. Managing and taking responsibility for a product category’s patent portfolio and/or another docket of patents, patent applications, invention reports, and investigations. Supporting IP litigation activity. Providing IP support in IP-related transactions. Being a proactive, trusted, and business-focused IP advisor. Providing other IP support as needed.
Qualification and Experience
Qualifications: BS or other undergraduate degree in mechanical engineering, electrical engineering, computer science, physics, or a similar science or engineering discipline. JD Degree or other law degree from an accredited law school. Admission to practice before the USPTO and at least one state bar. 5+ years of experience practicing patent law in a law firm or corporation with a sophisticated patent practice. Experience working directly with inventors and assessing the novelty of inventions. Experience drafting and prosecuting patent applications. Experience performing patent clearance/freedom-to-operate investigations. desired: Experience managing global patent portfolios and instructing and working with foreign patent agents. Transactional experience, including drafting and negotiating license agreements, joint development agreements, confidentiality agreements, and/or the like. Patent litigation experience. Trademark prosecution and/or litigation experience. Thorough knowledge of patent law and international patent procurement practices and procedures. Excellent written and oral communication skills, analytical skills, client relationship skills, and ability to interact with engineers, lawyers, and executives at all levels, both inside and outside the organization. Must be motivated, proactive, confident, and have a strong drive and will to perform, while also being flexible to handle both large and small projects with enthusiasm. Must be able to take ownership of projects and responsibilities in a fast-paced and ever-changing business environment. Must be innovative, professional, customer-focused, a fast learner, an open communicator, and a self-starter with strong business acumen. Must be respectful of other cultures, able to travel internationally, and interested in regularly working with people around the world. Desired: Working knowledge of other languages is a plus (e.g., Swedish, German, Japanese). International experience.
Job Code : 3651
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