Develop and oversee the Company’s intellectual property strategy.
Primary responsibility for managing communications with, and directing the activities of, outside counsel; actively assist in preparing, filing, and prosecuting domestic and foreign patent applications, including preparing arguments in response to office actions.
Provide guidance to senior management on licensing and business transactions involving intellectual property; including ability to prepare the patentability and freedom-to-operate opinions in collaboration with outside counsel, as necessary.
Work with R&D to assess the patentability of new inventions; assist in drafting and reviewing related invention disclosures.
Review and prepare freedom-to-operate opinions in collaboration with outside counsel, as necessary, in relation to new product ideas and developments coming from the R&D group.
Propose and execute strategies for protection of Company intellectual property.
Provide periodic training to Company employees regarding the protection of intellectual property.
Advise senior management on any new laws, regulations or statutes affecting the Company’s intellectual property.
Manage the IP budget.
Scientific/Engineering education background, preferably in electro-optics or electronics
A minimum of 3 years’ experience managing the preparation and prosecution of patent applications and the conduction of patentability and freedom-to-operate searches, either in a private organization, technology transfer office or academia.
Ability to develop strategic plans necessary to provide a strong IP position for the Company’s products and clearly articulate those plans to senior management.
Independent and self-motivated, with a strong sense of urgency and ability to drive a project to completion.
Excellent oral and written communication skills – must be able to communicate clearly both within the organization and externally to drive projects forward.
Highly effective analytical and problem-solving skills, including excellent attention to detail.
Collaborative personality with strong interpersonal skills.