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mardi 18 septembre 2012

ADB

Director of IP Department
Job Description

Profile
Candidate shall possess:
  •  Ability to search and study ideas from engineers and turn them into patent applications
    • Proven track record 
    • Strong technical or engineering skills 
    • Capability of writing a patent in English language
  •  Ability in building and enforcing defensive positions vis a vis litigation opponents and other third parties IP claimants
    •  Proven track record
  •  Experience in licensing patents
  •  Expertise in IP laws and patenting process
    •  Both for Europe (EPO) and for the US
    •  Preferably from a TV related or close technical domain
  •  High level of energy
    •  Complemented by curiosity and a proactive approach
    •  Hands on things approach
  •  Strong communication skills
    • With engineers
    • With patent attorneys and lawyers
    • Team management
  •  Perfect command of the English language
  •  A plus
    • Knowledge of Polish language
    • Practical knowledge of the European Patent Convention and the Patent Cooperation Treaty

Essential Functions

  • Work closely with top management to stimulate the patent generation and filing process
    • Engineering departments are monitored and searched for patentable ideas
    • Ideas are screened and assessed by the Patent Committee
  • Committee is chaired by the EVP strategy and Technology
    • Director of IP department shall organize and be the secretary of the Patent Committee
    • A significant amount of patent filings must take place every year
    • Patent applications are drafted and prosecuted, including supervising the activity of other IP team members and outside patent attorneys
  • Build an IP Strategy and manage the portfolio of patents
    • review existing patents - decision to maintain, drop or license
    • study of licensing options available
    • pursue (negotiate) the ones approved by top management
  • Provide advice and counseling on all aspects of IP
    • Patent prosecution: help to decide whether or not to seek patent protection. Negotiate the licensing agreements on suitable terms and conditions, notably for royalties and license fees.
    • Review and negotiate the IP aspects of commercial agreements
    • Infringement opinions: advise upon infringement avoidance, assist in the development of "engineer work around options,"
    • Handle opposition proceedings, and where required, co-operate with legal counsel in connection with these actions
  • Supervise IP activities of the team or external counsels
    • Patent/Registered rights search
    • Search patent information databases for novelty and infringement assessment purposes (prior art) in connection with new inventions and development projects
    • IP trainings: prepare and deliver IP training in the form of seminars or presentations for engineers, sales and marketing managers and senior management.

Education

  • Degree in a suitable technological discipline
  • At least 5 years – preferably 10 years - post qualification experience, preferably in industrial practice
  • European Patent Attorney qualification and/or a corresponding European national professional qualification

Location

  • Open (ideally Poznan, Poland)
  •  Travel to other company locations – notably where engineers are located (Poland, Ukraine, Italy)

Please submit your application, including your Curriculum Vitae, via E-mail to: m.vulliez (at) adbglobal.com

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