Intellectual Property Strategy Manager

Posting Date 2 days ago(9/23/2022 8:35 AM)
Requisition ID
2022-11568
Job Location(s)
Bloomington IN United States
Travel
Less than 10%
Position Type
Full Time
Company
Cook Inc - Bloomington
Category
Engineering

Overview

The Intellectual Property (IP) Strategy Manager will develop, implement, & manage patent strategy for selected businesses via collaboration w/R&D, Business, & Legal teams to support the commercial needs of Cook. This includes disclosure & application reviews, prosecution & filing decisions, portfolio analyses, monitoring competitive IP landscapes, & may include support of related activities such as evaluation of licensing opportunities, infringement analyses, & litigation.

Responsibilities

Within selected therapies/specialties, lead the development of global intellectual property strategies & support the management of Cook's portfolio of patents, trade secrets, & technical know-how while balancing costs:
• Coordinate regular cross-functional decision-making for routine IP management via both monthly IP Committee meetings as well as e-mail, including input on agenda content, provision of succinct analyses, summaries, & recommendations, & communication with outside counsel.
• Collaborate with engineers in harvesting new inventions: brainstorm, identify inventions, & provide input upon the preparation of disclosures.
• Review disclosures and engage patent committees, legal teams, and product development members in making strategic decisions on IP coverage.
• Review summaries of prior art searches and work with Legal to evaluate the patentability of inventions.

• Utilize IP Management System software to maintain IP coverage information for products & up to date IP summaries for R&D projects.
• Lead & participate in initiatives to increase quantity/quality of Cook's IP.
• In collaboration w/R&D, Business, & Legal teams: develop, communicate, update, & otherwise maintain IP strategies for selected product/technology areas.
• Conduct competitive intelligence programs by monitoring IP filings, product announcements, & technical literature for input into IP strategies,
• Conduct and/or obtain relevant IP landscape information,
• Prepare IP portfolio overviews & identify significant gaps as well as unwanted IP that may be considered for out-licensing or divestiture.
• Support patent Infringement investigations, as required.
• Train employees on invention disclosures & IP protection.
• Maintain high level of awareness & application of relevant industry standards

Qualifications

• Bachelor's degree in Marketing, Electrical, Mechanical, Chemical, or Biomedical Engineering or related scientific or legal discipline.
• 5+ years' experience managing &/or developing products in a Medical Device R&D environment (preferably including direct experience with related IP) or managing IP in any competitive environment.

• Ability to review and analyze technically complex documents, including scientific papers, patents, and technical specifications.
• Knowledge of patent application process and familiarity with reviewing patent claims and USPTO actions.
• Excellent analytical, interpersonal, verbal, and written communication skills.

 

Physical Requirements:

• Requires prolonged sitting, some bending, stooping, and stretching.
• Requires eye-hand coordination and manual dexterity sufficient to operate a keyboard, photocopier, telephone, calculator, and other office equipment.
• Contact may involve dealing with external legal resources, as necessary.

• Requires normal range of hearing and eyesight to record, prepare, and communicate appropriate reports.
• May require lifting papers or boxes up to 25 pounds occasionally. Work is performed in and office or home-office environment.
• Occasional travel may be required (up to 15%).

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