Intellectual Property Manager

Dover Corporation • Houston, TX

12d

About The Position

This role provides coordination and leadership for DPC’s intellectual property portfolio through strategic planning, the intellectual property committee, inventors, and legal counsel. The scope of this includes patents, trademarks, and trade secrets.

Requirements

• Bachelor's Degree in Engineering or Applied Sciences.
• Experience with IP and legal contractual agreements.
• Experience and knowledge of the patenting process.
• Experience with control of critical and time sensitive documents and correspondence.
• Demonstrated history of working directly with engineers and marketers in translating their concepts into a strategy resulting in solid legal protection.
• Demonstrated history of leading others or managing though influence.
• Analytical and critical skills
• The ability to communicate complex technical matters on a breadth of topics
• Willingness to take ownership, focused on results, has ability to prioritize and manage competing demands.
• Demonstrated verbal and written communication skills.
• Demonstrated ability to organize and prioritize.

Nice To Haves

• Registered Patent Agent in good standing to practice before the USPTO.
• Advanced degree.
• Previous industrial experience related to rotating and/or reciprocating machinery and understanding the function of critical components, such as sealing systems, bearings and advanced materials.

Responsibilities

• Work with key stakeholders in the organization to determine whether technology and inventions within each product line have commercial applications and recommend whether intellectual property protection should be sought.
• Foster and encourage DPC’s inventors to produce invention disclosures and other supporting documentation when the opportunity arises and guide patenting decisions.
• Initiate and manage patentability, right to use, and state of the art patent searches.
• Liaise with outside counsel to prepare, file, and prosecute patent applications and perform patent utilization and right-to-use analyses. Seek IP protection in key countries of focus for the business.
• Track progress and organize information pertaining to DPC’s IP portfolio of patents, trademarks, copyrights, and trade secrets.
• Identify, prompt decisions for, and notify outside agencies of patent prosecution decisions
• Develop and manage trade secret identification and protection strategies
• Engage and liaise with marketing team to determine branding strategies including name clearances and filing strategies.
• Facilitate brand name clearance searches and support trademarking legal needs.
• Consult decision makers and execute trademark decisions.
• File copyright registrations as needed.
• Facilitate IP clearances (freedom-to-operate) for new products and support to development and research teams.
• Lead competitive analysis of patent and commercial product landscapes.
• Lead early stages of infringement investigations and coordinate with outside counsel to perform evidence gathering and implement document holds.
• Monitor DPC brands for competitive trademarks filings; engage management and outside counsel to devise and execute strategies where necessary
• Manage the internal idea generation program that encourages innovation within engineering, operations, marketing, and business development.
• Lead cross-functional technology evaluation and review to enable IP decision making.
• Curate existing ideas, IP, concepts, and other innovations so as to ensure visibility and training of engineers.
• Lead or co-lead with outside counsel brainstorming sessions including targeted brainstorming, competitor product tear-down, patent design around sessions
• Coordinate efforts of innovators and legal council through the patenting process.
• Streamline all communications between external counsel and other stakeholders in the organization and minimizing the non-value added time spent by external counsel.
• Manage and facilitate monthly Global IP Committee meetings.
• Maintain strict document control practices.
• Lead development of IP strategies
• Build and maintain working relationships with global IP contributors and legal counsel.
• Manage and coach outside counsel to ensure best quality of work and responsible use of resources.
• Oversee IP due diligence activities with respect to third party licensing and acquisition projects.
• Track monthly IP spend on outside counsel and other IP services; support DPC budget preparation and cost/benefit analysis as needed. Increase savings on IP spend year over year while driving value through technology adoption and increasing sales of new products.
• Coordinate payment of legal fees through automated payment system.
• Promptly notify outside agencies of patent annuity payment decisions.

Benefits

• a 401(k) savings plan with employer contributions
• medical, dental and vision insurance
• wellness programs
• health savings account
• health care and dependent care flexible spending accounts
• company paid short-term disability and long-term disability
• company paid employee basic life and AD&D insurance
• supplemental employee and dependent life insurance
• optional accident, hospital indemnity and critical illness insurance
• adoption, surrogacy, and fertility benefits and assistance
• commuter benefits
• parental, military, jury duty, and bereavement leaves of absence
• paid time off
• business travel services
• employee discounts
• an employee assistance program that includes company paid counseling sessions and legal services

What This Job Offers

• Job Type: Full-time
• Career Level: Mid Level