Sr. Patent Engineer

Terumo•Franklin Township, NJ

8d•Hybrid

About The Position

This position is responsible for providing Intellectual Property (IP) support for one or more Divisions of the Company. This includes working closely with associates in engineering, manufacturing, sales and marketing, legal, and other functional areas to identify and protect the Company’s IP via patents, trademarks, or trade secrets. It also includes identifying and mitigating risks associated with introducing new products, providing competitive intelligence via IP searches and monitoring, evaluating new innovations for patentability, working with outside IP counsel (e.g., searches and patent prep and prosecution), and more generally supporting Company associates for IP-related issues.Job Details/Responsibilities Assist in the development and maintenance of the Company’s intellectual property (IP), including patents, trademarks, trade secrets and copyrights.Identify and mitigate IP legal risks relating to the launch of new products through freedom to operate (FTO) searches and analyses. Coordinate with IP leadership to communicate results to key stakeholders. Conduct and coordinate research into a variety of IP issues. Conduct analyses of competitors and create patent landscapes.Coordinate and manage work of outside IP legal counsel for patent and trademark prep and prosecution and for IP searches.Contribute to the development of IP policies and best practices. Manage assigned patent and trademark portfolios.Facilitate regular meetings with stakeholders to review innovation disclosures, patent portfolios, and other relevant IP matters (e.g., IP Committee Meetings). Assist with preparing and delivering IP training to business associates. Perform other duties as assigned. Job Responsibilities (continued)Organizational impact: Ensures that Company innovation is identified, harvested and protected, and that costs incurred with the forgoing are reasonable and justifiable. Manages patent portfolio to ensure it is aligned with current and identified future business and company objectives. Ensures responsible expenses as a result of the foregoing. Communication & Influence: Leads IP Committee meetings to review innovation disclosures and manage patent and trade secret protection. Subject-matter expert on patent portfolio and capable of explaining to technical and business stakeholders. May influence decision -making on IP strategy. Leadership & Autonomy: Capable of translating complex legal issues like freedom to operate so they are understandable by technical and business stakeholders. Able to develop solutions for freedom to operate challenges, e.g., design-around options, non-infringement and invalidity positions.

Requirements

Ability to work with minimal supervision.
Ability to work under strict time constraints and meet deadlines in timely manner.
Strong knowledge of USPTO, WO and EPO rules, procedures and practices.
Strong interpersonal skills and able to accomplish organizational objectives effectively.
Advanced computer skills, to include Microsoft Office, patent database and other applicable software programs.
Detailed oriented.
Strong written and verbal skills.
Ability to use discretion and good judgment and maintain confidentiality.
Requires a four-year college degree in Mechanical, Biomedical, or Electrical Engineering and a minimum of six (6) years engineering experience with minimum three of those years experience in an intellectual property law firm or corporate legal/IP department, or equivalent combination of education and experience.
Requires experience in preparing and prosecuting US, WO and EP patent and trademark applications.
Requires experience in searching USPTO and EPO databases and other sources of IP data and information (e.g., patents, patent applications, relevant publications, etc.)
Requires experience in conducting patentability, freedom to operate and landscape searches and in reporting results to stakeholders
Requires experience in gathering competitive intelligence relating to IP

Nice To Haves

Registered to practice before the USPTO preferred.
Medical device experience preferred.

Responsibilities

Assist in the development and maintenance of the Company’s intellectual property (IP), including patents, trademarks, trade secrets and copyrights.
Identify and mitigate IP legal risks relating to the launch of new products through freedom to operate (FTO) searches and analyses.
Coordinate with IP leadership to communicate results to key stakeholders.
Conduct and coordinate research into a variety of IP issues.
Conduct analyses of competitors and create patent landscapes.
Coordinate and manage work of outside IP legal counsel for patent and trademark prep and prosecution and for IP searches.
Contribute to the development of IP policies and best practices.
Manage assigned patent and trademark portfolios.
Facilitate regular meetings with stakeholders to review innovation disclosures, patent portfolios, and other relevant IP matters (e.g., IP Committee Meetings).
Assist with preparing and delivering IP training to business associates.
Perform other duties as assigned.