IP Specialist

Responsibilities:

• Work closely with R&D engineers to actively seek out patentable inventions
• Review invention disclosures, conduct interview with contributors/inventors and accurately document such discussions
• Take responsibility for the management of invention disclosures, IP portfolio and Review Steering Committee meetings
• Assist with drafting/reviewing patent specifications and preparing design filings
• Perform prior art searches and freedom-to-operate (FTO) searches
• Review prior art documents, office actions and strategize approach to responding to office actions in line with commercial and business strategy
• Monitor and docket patent/design prosecution deadlines
• Work closely with Legal and outside counsel to coordinate patent/design drafting, filing and prosecution worldwide
• Perform patent landscaping studies/prepare patent benchmarking reports and present findings to top executives
• Assist to maintain, update and improve Knowledge Management Portal /System to manage confidential information, technology contracts, etc. ensuring accessibility only to key personnel
• Assist to develop standard operating procedures, guidelines, best IP practices
• Participate in IP audit, work with QMS team and assist with implementing standard operating procedures within an IP framework for the Technology Department
• Assist with developing IP training materials and delivering training to new hires and staff
• Participate in regular discussions with Legal to align on any developments in the company or industry impacting patent portfolio
• Participate in IP enforcement and FTO projects

Requirements:

• Technical / Professional
• Bachelor/Master/PhD, preferably in Engineering or Science
• Strong technical/engineering expertise with a keen interest in studying research publication/journals, patents, commercial and legal documents
• Preferably at least 3 to 5 years of experience in research/engineering/technical role and/or at least 3 to 5 years of relevant IP/patent research experience
• Inquisitive and passionate about new and emerging technologies especially in renewable energy and in IP
• Excellent organizational skills with an eye for details
• Thinking out-of-the-box with strong analytical and reasoning skills
• Versatile and able to navigate quickly to focus on core issues and prioritize important tasks
• Good communication skills in English, both spoken and written
• People / Relations
• Able to work collaboratively across multiple functions, organizations and with a diverse group of colleagues and management
• A good team player with positive working attitude and willingness to learn is essential Knowledge
• Working experience in Solar/Semiconductor/Electronics manufacturing industry is advantageous
• Proficient with patent databases e.g. ESPACENET, PATENTSCOPE, USPTO systems (PAIR, etc), GLOBAL DOSSIER, PatBase, PatSnap, is advantageous
• Proficient in Excel (e.g. running and creating functions, pivot tables, charts, etc.) and PowerPoint is advantageous
• Physical, Certificates