Share this Job

Patent Portfolio Manager

Date: Aug 16, 2019

Location: Corning, NY, US, 14871

Company: Corning

Requisition Number: 38127

 

Corning is one of the world’s leading innovators in materials science. For more than 160 years, Corning has applied its unparalleled expertise in specialty glass, ceramics, and optical physics to develop products that have created new industries and transformed people’s lives.

Corning succeeds through sustained investment in R&D, a unique combination of material and process innovation, and close collaboration with customers to solve tough technology challenges.

Position Description:

  • Assigned responsibility by Division IP Counsel for a significant patent portfolio for assigned businesses or business segments in order to cost effectively and efficiently capture and protect Corning inventions.

Key Accountabilities:

  • Proactively oversees at least one significant patent portfolio of the relevant business in accordance with that business’s IP Strategy Plan and the policies and procedures of the IP Department.
  • Recommends modifications to the patenting strategy of the IP Strategy Plan to ensure such strategy remains aligned with business technology strategy and takes into account new information with regard to the strengths and weaknesses of Corning patent portfolio in light of the overall IP landscape and patent position of competitors.
  • Identifies opportunities to innovate and improve IP Department’s policies and procedures and relevant IP strategies with respect to patent portfolio management.
  • Collaborates with the business clients to ensure proper and comprehensive identification of Corning’s inventions.
  • Secures appropriate foreign and domestic protection of Corning’s inventions in accordance with the relevant business’s IP Strategy Plan and IP Department policies and procedures.
  • Ensures compliance with departmental filing guidelines for relevant portfolio(s).
  • Oversees and reviews the outsourcing of cases to ensure adequate protection of the relevant Corning inventions, including quality and cost control and adherence to timing requirements.
  • Independently leads the Patent Review Committee process for assigned portfolio(s).
  • Autonomously and proactively counsels and updates clients on matters related to individual patents and patent portfolio.
  • Works with other attorneys and agents as appropriate to supplement resources for the assigned businesses and oversees projects (including review of work product), and keeps the supervisor(s) of those other attorneys and agents apprised of the status and requirements of those projects, relating to the assigned businesses.
  • Maintains high proficiency on the current and enabling technologies related to the businesses supported.
  • Works with Intellectual Asset Manager of assigned businesses to optimize efficiencies of IP capture and processes, and value of the portfolio, including implementation of searching, invention mining, training, ID preparation, screening and follow-up, and invention “packaging” for outside counsel.
  • Oversees budgetary objectives assigned by supervisor for assigned businesses.

Required Education and Skills:

  • JD degree and member in good standing of state Bar and registered to practice before the USPTO.
  • BS and/or advanced degree in relevant technology (Materials Science or Chemical Engineering degrees and background preferred, but other technical backgrounds and experience that correspond well with our materials and chemistry-related technologies will be considered).
  • Very good written and verbal communication skills
  • Ability to identify and manage risks and recommend appropriate solutions consistent with the relevant risk tolerances of assigned business and the Company.
  • Ability to reduce complexity to an actionable set of facts and decision points.
  • Ability to work independently and manage multiple simultaneous projects effectively.
  • Comfortable interacting with inventors, managers and senior leadership. • Good common sense and judgment.

Critical Work Experiences (Required):

  • 7-10 years as a practicing patent attorney (law firm experience preferred)
  • Significant experience preparing and prosecuting patents, including supervision of foreign counsel.
  • Experience performing risk analyses and drafting infringement and validity opinions.

Critical Work Experiences (Desired):

  • Prior technical or patent examiner experience e.g., engineering or other technical role in industry
  • Exposure or experience drafting IP agreements and negotiating of IP transactions
  • Experience in litigation or USPTO or other patent office procedures

 

Travel Requirements: (National/International; 0-100%) Roughly 50% of the time.

 

 

This position does not support immigration sponsorship.

We prohibit discrimination on the basis of  race, color, gender, age, religion, national origin, sexual orientation, gender identity or expression, disability, or veteran status or any other legally protected status.


Nearest Major Market: Elmira