IP Portfolio Manager

Vertiv Group • Westerville, OH

17h

About The Position

The Intellectual Property Portfolio Manager, a key member of the Global Intellectual Property department, will play a crucial role in fostering collaboration between the legal and engineering teams to safeguard Vertiv's intellectual property. The primary focus of this role is managing an international patent portfolio, including processing invention disclosures, drafting patent applications, and overseeing outside counsel. Additionally, responsibilities encompass the development, implementation, and supervision of patent policies, procedures, and processes company-wide, as well as handling patent-related matters for designated Business Units.

Requirements

• Preferred candidate will have at least 5 years of full-time patent prosecution experience with a reputable law firm or company.
• Minimum BS in Engineering or Physics; an MS or Ph.D. would certainly be valued (other engineering disciplines will be considered as well).
• Must possess excellent interpersonal skills suitable engineering as well as executive management interaction.
• Licensed to practice in front of the European Patent Office or equivalent European Patent Convention Country.
• Excellent project management skills
• Excellent organizational, analytical, and interpersonal skills
• Proficiency in patent management software solutions.
• Ability to work independently and multi-task in a fast-paced environment
• Proficiency in reviewing and analyzing patents with the ability to summarize the scope of the patents and communicate such scope (both orally and in written form) to a variety of stakeholders
• Proficiency in various software programs/patent searching platforms, such as IP.com or Questel

Nice To Haves

• Prior corporate Intellectual Property management experience is a plus.

Responsibilities

• Coordinate and lead regular patent committee meetings to evaluate invention disclosures and patent applications in compliance with international corporate intellectual property (IP) guidelines.
• Oversee the international invention disclosure process and manage a global patent portfolio in alignment with corporate and USPTO guidelines.
• Establish and implement an efficient system for inventors to submit new inventions while ensuring compliance with US standards.
• Generate and present reports relating to the portfolio’s status, key performance indicators, and performance to senior management and stakeholders, with a focus on USmarket considerations.
• Work closely with inventors and external counsel to draft high-quality patent applications that meet International and USPTO standards.
• Identify key performance metrics to optimize the patent prosecution process.
• Supervise the patent prosecution process, including responding to office actions and engaging with the USPTO and foreign counsel.
• Ensure consistency with the company’s IP strategy and USPTO patent regulations.

What This Job Offers

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