Director - Intellectual Property

Stimulating. Motivating. Challenging.

Stimulating. Motivating. Challenging.

The Kudelski Group is: a world leader in digital security. Its technologies are used in a wide range of services and applications requiring access control and rights management to secure the revenues of content owners and service providers for digital television. The Group also offers cyber security solutions and services focused on helping companies assess risks and vulnerabilities and protect their data and systems. And finally it is a technology leader in the area of access control and management of people or vehicles to sites and events.

Location: Cheseaux, Switzerland

Mission

The Kudelski Group (the “Group”) is recruiting a European qualified Intellectual Property (“IP”)/Patent Attorney to join the Kudelski Intellectual Property and Innovation (“KIPI”) team. The IP/Patent Attorney will work closely with the internal team to implement the IP strategy for the Group and assist in worldwide protection and support of the Group’s IP and innovation. The IP/Patent Attorney needs to thrive in a complex, fast-paced, and dynamic business environment, and enjoy collaboration and teamwork with fellow legal and IP professionals and business partners.

The successful candidate will have 8 years experience in a computer sciences environment capturing inventions, drafting and prosecuting patent applications, and communicating with technical and business clients and partners. A background in trademark prosecution and maintenance as well as trade secret and copyright protection is also desirable.

Responsibilities

Primary responsibilities:

• Possess foundational knowledge necessary to develop a deep understanding of the Group’s various technologies (cybersecurity, Internet of Things, video content management/security/delivery, market players, services, and providers).
• Drive innovation and capture inventions arising out of the Group’s businesses and technologies.
• Conduct innovation and invention disclosure sessions with inventors in Europe and worldwide.
• Assess invention disclosures and conduct prior art analysis to develop invention disclosures and select for submission to the patent committee.
• Participate in regular patent committee meetings to review invention disclosures and make operational decisions with the technical leads and KIPI members serving on the committee.
• Stay current with patent law changes and support development, maintenance, and education of best practices for European Patent Office (EPO) and worldwide patent systems.
• Review and manage outside counsel following outside counsel guidelines and budget for preparation and prosecution of patent applications.
• Manage office actions, foreign filing decisions, appeals, continuations, new filings, and occasionally draft portions of applications and/or claims to ensure compliance with varying global patent prosecution and enforcement systems.
• Participate in and drive processes and best practices designed to strategically prepare and prosecute high-value patent applications.
• Support case development for licensing and patent litigation in support of competitive threats and targets within the scope of IP strategy.
• Assist in analysis of applications/patents being considered for use in licensing, acquisition, or divestiture.
• Ensure Group maintains a “Best in Class” asset management process with excellent results.

Requirements / Profile

Required qualifications:

• BS. or equivalent in Computer Science, Electrical Engineering, or a comparable amount of work experience in those fields.
• At least 1-2 years of practice supervising and/or providing strategic guidance in the preparation and prosecution of applications in foreign jurisdictions, aside from EPO and unitary patent.
• At least 8 years of patent preparation and prosecution experience of software applications
• Deep knowledge of EPO and unitary patent practice and procedures.
• Knowledge of foreign patent laws and/or patent office systems, preferably European patent laws and European Patent Office (EPO) procedures, including unitary patent and related procedures.
• Exposure to foreign patent filing and prosecution (outside EPO and unitary patent).
• Fluency in English language and excellent communication skills, particularly written communication skills.
• Proficiency with MS Office Suite

Preferred qualifications:

• At least 1-2 years of practice supervising and/or providing strategic guidance in the preparation and prosecution of applications in foreign jurisdictions, aside from EPO and unitary patent.
• Knowledge of foreign patent laws and/or patent office systems, preferably European patent laws and European Patent Office (EPO) procedures, including unitary patent and related procedures.
• At least 2-3 years of patent preparation and prosecution experience of software applications, preferably experience involving the technologies aligned with the Group’s business.
• At least 1 year of experience independently conducting invention disclosure/harvesting/mining sessions with inventors.
• Experience assessing invention disclosures for patentability.
• Experience conducting prior art analysis for patentability, and/or patent infringement or validity.

Essential traits:

• Self-starter who is a team player and can operate as part of a globally diverse high performing team.
• Excellent communication skills, the ability to work with various levels of management, strong analytical skills, and detail oriented.
• Strong organizational skills, e.g., maintaining attention to detail on multiple projects simultaneously, and the ability to adjust to changing priorities and deadlines.
• Capacity to proactively isolate and prioritize issues and to focus on implementing both top-level, strategic solutions as well as the day-to-day initiatives.
• Ability to quickly assimilate and understand complex situations and information, including highly technical information.
• Able to quickly establish credibility, respect and trust with internal clients/stakeholders and external service providers and business partners.
• Strong sense of ownership, integrity, and courage of conscience.

Language skills:

• English language fluency is necessary. Other languages, particularly French, a strong asset.

We offer you:

• Market competitive compensation package (salary + bonus).
• Robust online training opportunities.
• Generous time-off policies.

Reference: 15180

Publication Date: 10-12-2024