ABOUT THE JOB

Interfacing with our numerous internal clients the Patent Engineer provides Intellectual Property support on the business processes of the company and its affiliates. Within the Legal Department (IP team) the Patent Engineer will be collaborating with R&D engineers and business operatives, studying the IP related requests and providing initial counsel on the technical elements of the new developments’ exploitation, validity, IP matters and protection strategy etc.

This position reports to the Patent Manager, based in Grenoble.

ROLES AND RESPONSIBILITIES

1. Advise and assist internal clients in the matters of new developments and their exploitation:

• Conduct regular and transverse prior art studies and analysis during or after product conception,
• Study and analyse competitors patents and patent portfolios,
• Participate actively in the IP studies of the different R&D projects and report on the follow-up of such projects to the IP Manager,
• Assist R&D teams with work around advise to bypass foreign IP rights,
• Evaluate and analyse technical documents (drawings etc.),
• Conduct IP trainings on regular basis and provide additional training due to special wishes.

2. Advise the clients on patentability matters and invention matters:

• Initial evaluation of inventions,
• Invention analysis and initial technical analysis for potential patentability,
• Support Inventors to improve the quality of invention disclosures with added illustrations, pictures, improved disclosure descriptions and/or improved concept development,
• Participate in the brainstorming sessions on new concepts, give feedback to the IP team on these sessions and on the results expected,
• Support the timely management of invention disclosure/ patent applications to facilitate the completion of the patent applications,
• Communicate matters with local teams on IP strategic matters like filing, extension or maintenance decisions, according to internal company procedures and exchanges with the IP team.

3. Support internal projects and developments, support and participate in IP strategy matters:

• Assist the IP network to increase the awareness of the R&D teams of IP strategic questions and IP risk management,
• Provide technical surveillance of competitors and active patents related to the activity of the company,
• Coordinate the matters of filing of patent applications, assume the link between the inventor and IP external Firm for the patent filings,
• Evaluate counterfeits and infringements for potential litigation matters (defence/offense) related to IP, involve IP Manager for final decision,
• Prepare 3rd party submission / opposition /invalidity actions to IP rights and the related organizations, preservation of evidence, coordination of external searches, definition of strategy,
• Provide risk analyse due to potential infringement cases,
• Support local Global Legal Counsel and sales teams during agreement/contract drafting proceedings, involve IP Manager for final decision,
• B2B coordination/negotiation referring IP related topics (co-ownership, infringement…), involve IP Manager for final decision,
• Selection of countries for nationalization and validation for additional protection after the priority filing,
• Observe the dedicated IP portfolio referring business relevance, determination to pursue patent families including decisions for payments for annual fees,
• Analyse inventor remuneration systems, advice giving of legal constraints due to local legislation,
• Counsel IP referents,
• Educate new team members according to to AR internal procedures,

4. Day to day tasks:

• Complete, maintain, analyse and use databases – internal and external,
• Participate in the IP network exchanges, committees and activities etc.

EDUCATION AND EXPERIENCE

• Studies : Engineer – Bachelor of Science – Engineering background with a comfort with technical products
• Experience : Previous patent analysis or patent searching experience preferred.

SKILLS

• Top notch analytical and communication skills.
• Self-starter and highly motivated.
• Databases and search tools like Orbit, DIAM’S, official databases – EPO, USPTO, SIPO etc.
• Patent research and analysis skills, High knowledge of patents and IP procedures.
• Excellent relational skills and communication skills.
• Positive.
• Open minded and attracted by international environments.

LANGUAGE REQUIREMENTS

• Fluent English required. French highly appreciated
• Regional mother tongue other than English or French highly appreciated.