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As our Senior Patent Specialist, you'll plan and manage Intellectual Property prosecution primarily for our Digital product engine team along with our other Advanced R&D teams (such as Footwear, Equipment and Apparel). The position includes researching utility invention disclosures, directing external counsel in the drafting of applications and overseeing the finalization of patent applications to be submitted to global Patent Offices. You'll report regularly to the business team on recent activities and metrics related to the pace and efficacy of the patent procurement process. You'll assume project manager responsibilities in developing and implementing Intellectual Property related initiatives, such as brainstorming sessions and reviews of potential IP purchases, or other initiatives that may arise from time to time. In addition, you'll conduct some risk assessment analysis and provide design-around solutions for the Digital product engine, especially in the area of utility patents. You'll liaise with design patent, trademark and copyright teams, the litigation team and external counsel and assist in preparing utility and design patent disclosure documents, and clearance letters. In addition, you'll maintain a high-level of awareness of all current development projects, production techniques, materials, and patents relating to the Digital product engine and its competitors.
Requirements for the position include:
Bachelor of Science degree
Electrical Engineering or Computer Science preferred; Engineering (electronics, mechanical, materials, or chemical), and Physics with relevant industry experience may be considered,
Patent agent preferred
5+ years' patent application and prosecution experience
Proficiencies with patent document management system, patent mapping software and international patent search databases
Knowledge of legal process including, but not limited to: court proceedings, depositions, and patent and invention law, and the patent application process
Basic understanding of research and project management methodologies and techniques and how they relate to manufacturing and product development
Knowledge of invention process, state-of-the-art technologies
Experience training and working with business partners (i.e. Advanced R&D teams) on appropriate disclosure procedures and processes
Strong planning and analytical capabilities
Proficiencies in using Microsoft's suite of software, i.e., Excel, Word, PowerPoint
Demonstrated project management experience
Experience as a PTO Examiner, knowledge of business method patents, technology development, patenting electronics and/or consumer goods, experience at a start-up company, experience in patent opinion drafting and litigation and being a sports enthusiast are all pluses
Previous experience within digital, ecommerce or electronics industry preferred.
