Company Name EPA INSIGHT
Location Paris, France
Date Posted Apr 26, 2017
Category Default
Job Type Full-Time



Patent Attorney - Industrial Materials Science - In-house

Outstanding opportunity - an emerging role within a leading global industrial materials business

Location: Paris

The Patent Attorney will provide strategic patent support to the Global Intellectual Property (IP) function within the Groups legal department.

The Patent Attorney will be responsible for managing the global patent portfolios of the High Resistance Minerals and Graphite & Carbon business units, with a heavy emphasis on European filing and prosecution procedures. The patent attorney will provide business-focused strategic IP advice to business and technical teams on day to day matters as well as through IP trainings.

• Serve as primary IP contact to the assigned Business Units with emphasis on providing European regional support for such assigned Business Units.
• Maintain close collaboration with Chief IP Counsel on key matters.
• Draft patent applications and manage IP portfolio, including patent prosecution, oppositions and appeal proceedings for the assigned Business Units.
• Regularly conduct patentability, freedom to operate and landscape patent searches to assist each assigned Business Unit to help determine white spaces as well as create competitive blocks.
• Assist the Global Chief IP Counsel with crafting the IP strategy for each of the assigned Business Units by working closely with the business and technical innovation teams at each of those Business Units.
• Regularly conduct IP trainings for key stakeholders within the assigned Business Units.
• Assist the Global Chief IP Counsel on IP due diligence related to M&A, joint venture and licensing deals.
• Assist commercial legal counsel on IP aspects of contracts as they relate to the assigned Business Units.
• Assist with special projects as needed.

Education and Experience requirements:
European qualified patent attorney with law degree preferred
Chemical Engineering or Material Science-related degree preferred
English required, knowledge of German highly recommended with knowledge of French a plus
Law firm and In-house experience preferred
Travel: International and domestic (~25%)

Minimum 10+ years of patent-specific legal experience

Knowledge, skills, abilities and other characteristics:
• Significant knowledge and expertise with global patent prosecution processes, including expert knowledge of relevant patent laws, deadlines and documents internationally
• Knowledge and expertise in patent searching and clearance processes
• Ability to multi-task under pressure while continuing to maintain a positive and calm attitude
• Strong problem-solving and analytical skills
• Ability to work independently and with cross-functional clients
• Ability to work effectively with multiple cultures throughout the world
• Proficiency in German highly preferred
• Proficiency in: Patent docketing systems, Word, Excel, Access and PowerPoint

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