IP Counsel

Job Description:

Responsibilities

• Intellectual Property Portfolio Development:
• Strategic curation and expansion of IP assets to align with business objectives and market opportunities. 
• Supporting R&D in ideation, creation, and development:
• Guiding innovation processes from concept to commercialization while safeguarding IP rights. 
• 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.
• Patent Audit:
• Systematic review of existing patents to assess validity, compliance, and alignment with organizational strategy. 
• Patent Searches (State of the Art, FTO, Invalidity, etc.) 
• Executing targeted searches to inform R&D direction, mitigate infringement risks, or challenge/existing patents. 
• Responding to FERs and Office Actions of other jurisdictions,
• Addressing patent examiners' queries with technical-legal arguments to secure grant approvals. 
• Attending Hearing on Patent matters
• Advocating for IP rights in legal or administrative proceedings to resolve disputes or oppositions. 
• Managing IP management tool AQX Corporate
• Overseeing digital IP workflows, docketing, and analytics for streamlined portfolio management. 
• Negotiating Research Contracts & NDAs with various Research partners:
• Structuring agreements with partners to define IP ownership, licensing, and confidentiality terms. 
• IP awareness sessions:
• Educating teams on IP best practices to foster innovation and ensure timely, secure filings. 

Qualification & Experience      

• Having sound knowledge of Indian Patent Act 1970, PCT
• IP searching/FTO/Invalidity
• Expertise to use IP Databases
• Patent Drafting
• Patent Prosecution
• National Patent Filing/PCT Filing
• Due Diligence of Patent portfolios and identifying emerging IP trends
• Skills on Patent portfolio management
• Patent landscaping
• IP audits
• Technical competence to perform intellectual property and technical due diligence.
• Technical competence to execute patent landscaping, technology scouting, and data mining (programming would be an advantage) projects
• Impeccable written and verbal communications to make knowledge-driven recommendations to technical and business leadership.
• Collaborative aptitude to engage with people from diverse skill set to retrieve the insights
• Exposure to IP, Business, and technical databases
• Registered Patent Agents/LLB/LLM in IP law preferred.