Description:

Position Summary:
Manages the H&V IP Portfolio, including setting strategy and ensuring alignment of internal stakeholders. Responsible for coordinating the invention capture process from invention disclosure to patent application filing. By working directly with Scientists in Technology, refines ideas for inventions, assists with prior art searches, assesses patentability, drafts patent applications and evaluates freedom to operate. Assists with the general work of the Legal Department.

Duties and Responsibilities:

Work directly with Scientists to evaluate invention disclosures. Make recommendations as to additional R&D work or prior art searching that needs to be conducted prior to patenting. Set deadlines and engage in follow-up to ensure that applications are being applied for in a timely manner.
Act as a liaison between outside patent counsel and inventors to ensure accuracy, completeness and timeliness of all patent applications. Draft a portion of the company's patent applications and provide to outside counsel for filing and prosecution.
Assist Scientists with prior art searching to establish patentability and freedom to operate.
Evaluate and establish non-infringement and invalidity positions with respect to competitive patents and draft opinions on the same.
Provide training for employees on various aspects of IP protection.
Develop written IP strategies for key areas of the company's business.
Conduct trade secret audits and work with other functions to ensure adequate protections are in place.
Provide advice regarding IP issues in transactional matters such as customer contracts, grant agreements, acquisitions, etc.
Track IP metrics through the use of internal patent docketing software.
Review and draft contracts related to confidentiality and IP protection, including confidentiality agreements.
Other related duties as assigned or required including working in other areas of the law as circumstances allow.
This position may require access to information controlled by the International Traffic in Arms Regulations and therefore the successful candidate must be either (a) a US Citizen, (b) a lawful permanent resident of the US as defined by 8 U.S.C. 1101(a)(20), or (c) a protected individual as defined by 8 U.S.C. 1324b(a)(3).

Education/Experience:

JD degree from an accredited law school with undergraduate degree in Chemistry or Materials Science. (Preferred candidates will have a Masters or PhD in Chemistry or Materials Science.)
Admitted to practice in the US PTO and admitted to the Massachusetts bar.
Minimum of 5 years of experience, including work as a patent agent or attorney in a law firm. In-house experience preferred.
Strong work ethic and excellent organizational skills.
Ability to keep track of multiple projects at the same time and ensure that each project is progressing as planned.
Excellent business judgment and verbal and written communication skills.
Practical problem-solving abilities.
Willingness and ability to work independently and in a team setting.
Ability to proactively identify and resolve legal issues efficiently and effectively.
Ability to prioritize conflicting demands of internal clients.
Ability and willingness to reach beyond IP issues and help serve the legal needs of the organization as a whole.
Proficient with MS Office.

Physical Requirements and Environment:
Some domestic and international travel is required.