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Patent Associate

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Patent Associate
Openings Mumbai

Job Overview

  • Date Posted:

  • Location:

    Mumbai

  • Company:

    Stratologon Software Solutions Pvt Ltd

  • Jobs Type:

    Patent- Law firms

  • Job Categories:

    Senior Associate

  • Qualification:

    B.Tech/ B.E

  • Experience:

    5-10 Years

Full description

  • Patent Drafting & Prosecution
    • Work closely with IP Managers & Attorneys for new patent filings, including claims drafting.
    • Work closely with IP Managers & Attorneys to manage active patent prosecution.
  • Patent Analytics
    • Closely work with IP Managers & IP SMEs at the Global Franchises and identify opportunities for proactively protecting the Intellectual Property (IP)
    • Closely work with patent attorneys/patent liaisons and act as a link between R&D, Legal team and the Business Leaders for IP related matters
    • Conduct landscape/ ”White Space” searches/analysis for identifying new areas and strategic directions for the organization
    • Conduct prior art, freedom to operate (FTO), and validity searches for various R&D projects.
    • Proactively monitor competitor activities through patent literature and periodically assess and identify potential new competitors.
    • Generate weekly patent alerts in the technical areas of interest for monitoring new developments.
    • Assist patent attorneys for patent due diligence work.
    • Execute other critical IP projects.

  • Technical Competencies /Skills & Experience

  • 8 – 10 years of IP Experience including
    • Patent Drafting & Prosecution Experience
      • Draft and write or amend Draft Patent Claims
      • Draft Responses to objections to grant of patent raised by Patent Examiners in Examination Reports
      • Draft Specification for patenting an invention or new technology.
      • Well-versed in interpretation of various provisions of the Patents Act, 1970, and the Patent Rules, 2003, etc.
      • Well versed with IPO e-filing portal.
    • Patent Analytics Experience
      • Ability to develop complex search strategies and taxonomies to search across various patent and scientific literature databases.
      • Prior Art Searching for Patentability Assessment, Freedom to Operate Analysis, Patent Validity
      • Experience in drafting expanded disclosures and office action responses.
      • Strategic IP Analytics including Technology Landscapes, White Space Analysis, Competitive Intelligence
      • Proficient in searching with various databases including Derwent Innovation, Orbit, PatSnap, STN, Espacenet and USPTO etc.
      • Proficient in searching scientific literature databases like Science Direct, Scirus etc.
  • Good understanding of Patent Law – TRIPS agreement, Composition of US, EPO, India and China Patents, standards of patentability and differences between patent law of different jurisdictions

Required Knowledge, Skills, and Abilities

    • Patent Drafting & Prosecution
      • Claims Drafting
      • Specification Drafting
      • Drafting responses to Office Actions
    • Patent Analytics
      • Novelty Searches
      • Freedom to Operate Searches
      • Patent Landscapes

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