IP Counsel

Experience: 3 - 7 Years

An IP Counsel is expected to collaborate closely with inventors to identify and develop patentable innovations. The role involves preparing comprehensive applications by drafting detailed patent documents that include precise claims and thorough descriptions while ensuring all necessary information is clearly articulated as per the patent act. The IP Counsel should conduct prior art research to establish the uniqueness of innovations and stay updated on relevant patent laws and practices to ensure compliance with regulatory requirements. Effective communication with internal teams and external attorneys is vital throughout the application process, as is developing strategic plans for national and international patent filings that navigate the complexities of different jurisdictions. Additionally, the IP Counsel will need to prepare and submit responses to any objections or rejections from patent offices and monitor competitors’ patent filings to inform and strengthen the company's intellectual property strategy.

1)      Intellectual Property Portfolio Development:

·       Strategic curation and expansion of IP assets to align with business objectives and market opportunities. 

2)      Supporting R&D in ideation, creation, and development:

·       Guiding innovation processes from concept to commercialization while safeguarding IP rights. 

1)      Interviewing inventors, conducting Search and Patent drafting

·       Collaborating with inventors to document novel ideas, validate uniqueness via prior art searches, and draft robust patent applications.

2)      Patent Audit:

·       Systematic review of existing patents to assess validity, compliance, and alignment with organizational strategy. 

3)      Patent Searches (State of the Art, FTO, Invalidity, etc.) 

·       Executing targeted searches to inform R&D direction, mitigate infringement risks, or challenge/existing patents. 

4)      Responding to FERs and Office Actions of other jurisdictions,

·       Addressing patent examiners' queries with technical-legal arguments to secure grant approvals. 

5)      Attending Hearing on Patent matters

·       Advocating for IP rights in legal or administrative proceedings to resolve disputes or oppositions. 

6)      Managing IP management tool AQX Corporate

·       Overseeing digital IP workflows, docketing, and analytics for streamlined portfolio management. 

7)      Negotiating Research Contracts & NDAs with various Research partners:

·       Structuring agreements with partners to define IP ownership, licensing, and confidentiality terms. 

8)      IP awareness sessions:

·       Educating teams on IP best practices to foster innovation and ensure timely, secure filings. 

Skills and qualifications

1. Having sound knowledge of Indian Patent Act 1970, PCT
2. IP searching/FTO/Invalidity
3. Expertise to use IP Databases
4. Patent Drafting
5. Patent Prosecution
6. National Patent Filing/PCT Filing
7. Due Diligence of Patent portfolios and identifying emerging IP trends
8. Skills on Patent portfolio management
9. Patent landscaping
10. IP audits
11. Technical competence to perform intellectual property and technical due diligence.
12. Technical competence to execute patent landscaping, technology scouting, and data mining (programming would be an advantage) projects
13. Impeccable written and verbal communications to make knowledge-driven recommendations to technical and business leadership.
14. Collaborative aptitude to engage with people from diverse skill set to retrieve the insights
15. Exposure to IP, Business, and technical databases

Willingness to travel to different conferences and events and gathering information