Principal Job Accountabilities:
- Protection of IP Assets:
- Ensure protection and defense of intellectual property, including know-how.
- Harvest and evaluate invention disclosures, initiate novelty searches, and support data analysis.
- Ensure registration, enforcement, maintenance, and defense of trademarks.
- Draft patent applications and oversee prosecution.
- Defend intellectual property rights against third-party attacks.
- Assist in the review of patents and trademarks.
- Identify IP infringements and enforce patents and trademarks.
- Key Performance Indicator (KPI): Nil reported infringement.
- IP Risk Management:
- Conduct patent landscaping and freedom-to-operate evaluations related to company product portfolios.
- Perform patentability searches, literature searches, and IP analysis.
- Ensure proper IP risk management to facilitate product launches.
- Conduct patentability assessments, patent drafting, filing, and PCT filing.
- Define and implement countermeasures against competitors IP and intelligence.
- KPI: Nil incidence of filing violations and rejections.
- Scientific Information Management, Patent Filing, and IP Awareness:
- Provide support for all search requests related to patent information.
- Draft, file, and prosecute patents in different jurisdictions worldwide.
- Offer IP counseling to R&D teams, conduct prior art searches, and perform infringement and patentability analysis.
- Use databases to retrieve external information relevant to the company.
- Keep all stakeholders updated on major IP legal developments.
- Perform IP awareness training for R&D and technology teams.
- KPI: Quality of search and protection of IP assets.
- Other IP Management Activities:
- Draft IP agreements.
- Assist in the review of patents and trademarks.
- Identify IP infringements and enforce patents and trademarks.
Skills and Academic Qualifications:
- Educational Qualifications:
- Ph.D. in Chemistry, M.Sc. in Organic Chemistry, or Polymer Technology.
- Preferred: PG Diploma in Intellectual Property Rights.
- Optional: Patent Agent, Trademark Agent, or Degree in Law.
- Functional Skills Required:
- Intellectually rigorous with the ability to stay updated with the latest developments in the IP domain.
- Excellent drafting and communication skills.
- Thorough understanding of patents and trademarks in different countries.
- Hands-on experience in patent prosecution and trademark filing.
- Technical Skills Required:
- Patent searching (infringement searches, FTO searches, patentability, prior art searches).
- Patent drafting.
- Patent prosecution (drafting responses to FER, attending hearings until grant).
- Trademark filing and prosecution.
