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Years of Experience
ProfilePatent Attorney The candidate will provide counsel to all levels within Engineering and Marketing during the New Product Development process. Will be responsible for the patent portfolio and new product risk mitigation for various Business Units within Milwaukee Tool. Provide advice to the Business Units' engineering and marketing leadership regarding patentability and infringement risk for new product development. Evaluate, develop, and implement patent filing and searching strategies for new products. Serve as a liaison between in-house engineering and marketing teams, global subsidiaries and affiliates, and outside counsel. Counsel and coach engineering and marketing personnel regarding patent issues. Present patent risks and updates for new projects to management in a clear and concise manner, with ability to provide practical legal advice upon which effective business decisions may be made. Participate in recurring new product development meetings to stay informed on changing product design features, assist engineering teams with understanding the patent landscape, and harvest strategic inventions for patent protection. Monitor competitor portfolios to offer strategic advice to the business. Chair and prepare necessary materials for IP Review Committee to inform leadership of patent risks, opportunities, and developments. Analyze offensive and defensive infringement positions, send and respond to patent notice letters, and support IP litigation.
Qualification and Experience
The candidate should have Bachelor's degree in Engineering or educational equivalent (mechanical or electrical engineering preferred). Juris Doctor Degree from an accredited law school is needed. Must be registered to practice before the United States Patent & Trademark Office. Should have 3 years experience in IP counseling, patent preparation, and prosecution (law firm or corporate legal department experience). Must have strong communication, critical thinking, and writing skills to support effective communication with all levels of marketing, engineering, and leadership within the business. Should have ability to develop, communicate, and execute IP tactics to support those business needs.
Techtronic Industries Co Ltd
13135 West Lisbon Road
Brookfield, WI 53005-2550