Director, Intellectual Property

Gleason•Rochester, NY

About The Position

The Director – Intellectual Property, as a key member of Gleason’s Legal Department and reporting to the Vice President, General Counsel & Secretary, will oversee the intellectual property (IP) functions of the Company.

Requirements

Strong organizational, time management, and communication skills – ability to multi-task.
Must be a self-starter, highly motivated, possess a strong work ethic, and demonstrate an ability to operate proactively and independently.
Ability to take a practical and creative approach to solving complex business problems in the field of IP.
Ability to act quickly when required by time-sensitive business needs and reprioritize/pivot as requirements evolve.
Ability to analyze data, draw conclusions, and present findings in verbal, written, and presentation form.
Ability to work collaboratively within a team environment and interact effectively with individuals cross-functionally and at all levels of the organization.
Ability to think strategically about the Company’s overall approach to protecting and enforcing IP rights.
High degree of proficiency with Microsoft Office (Teams, Word, Excel, PowerPoint, and Outlook).

Nice To Haves

Patent attorney or patent agent registered to practice before the USPTO.
Familiarity with International (PCT) practice.
Familiarity with trademark practice (U.S. and foreign).
Familiarity with key IP-related clauses in commercial contracts (e.g., IP ownership & indemnities).
Interest in learning about new technologies; engineering background preferred (mechanical is a plus).
Experience working in the manufacturing industry, particularly gear manufacturing, is a plus.
German language proficiency is a plus, but not required.
Familiarity with IP portfolio management solutions is a plus.

Responsibilities

Support the development and implementation of Gleason’s IP strategy in alignment with business objectives.
Manage the Company’s intellectual property portfolio, including patents, trademarks, copyrights, domain names, and trade secrets.
Maintain Gleason’s Patent & Trademark List, detailing the current status of all Company patents and trademarks; track all relevant dates and deadlines for Gleason’s IP assets.
Work with internal resources and external counsel to acquire and enforce the Company’s IP rights and defend against any claims of infringement.
Proactively harvest inventions to ensure early protection of all important technology developments.
In coordination with the business and leadership teams, determine whether and what to file, including the assessment of the viability of protecting inventions as trade secrets.
Prepare, draft, and file U.S. patent applications for inventions originating from the Company’s U.S. entities.
Arrange for the timely filing of all International (PCT) and non-U.S. patent applications, including the instruction of foreign counsel and coordination of relevant translations; prepare necessary U.S. Receiving Office documentation for PCT applications filed via the U.S. Patent and Trademark Office (USPTO).
Respond to Official Actions from the USPTO for all entities; prepare arguments/amendments as appropriate.
Prepare patent assignments for all U.S. patent applications, obtain inventor signatures, and file for recordation in the USPTO; manage the Company’s deposit account with the USPTO.
Review and approve responses prepared by foreign counsel for all foreign-filed patent applications; provide additional remarks/arguments/documents and suggest changes where necessary.
Seek appropriate technical assistance from Company experts in the preparation of applications and responses.
Prepare annual IP budgets for each Company entity that owns patents/applications; review and approve all IP-related invoices, including allocation of expenses to the appropriate legal entities; track IP expenses for all Gleason entities.
Manage the Company’s patent annuity payments via coordination of quarterly review meetings of the Company’s Intellectual Property Review Board; report annuity decisions, new applications, and new grants to the Company’s annuity payment service.
Regularly monitor the publication of gear-related technology patents and applications, as well as other relevant publications; analyze and disseminate findings to business teams.
Provide support as needed on contract matters, including patent and trademark licensing agreements, joint development agreements, delimitation agreements, and other types of agreements.
Review brochures and other marketing materials from an IP standpoint.
Provide targeted trainings on IP-related matters to the business teams globally.
Respond to ad hoc questions from stakeholders and support other key initiatives (Gleason’s annual Innovation Award, inventor recognition plaques, etc.).