Patent Attorney - Agent

Job Title: Patent Attorney/Patent Agent (In-House)

Location: Phoenix, AZ / Bay Area, CA

Dept: Kudelski Innovation and Intellectual Property Team

The Kudelski Group (the “Group”) is looking for a Registered U.S. Patent Attorney or Agent with at least 2-3 years of experience and with a strong technical background in the computer sciences and software technology to join the Kudelski Intellectual Property and Innovation (“KIPI”) team. The Patent attorney/agent will work closely with KIPI’s Patent Attorneys to support KIPI in implementation of IP strategy for the Group and assist in worldwide protection and support of the Group’s IP and innovation. A successful candidate will have experience capturing inventions, drafting and prosecuting patent applications, and communicating with technical and business clients and partners. Some background in trademark prosecution and maintenance is also desirable. The Patent Attorney/agent needs to thrive in a complex, fast-paced, and dynamic business environment, and enjoy collaboration and teamwork with fellow IP professionals and business partners.

Reports to: Vice President, Chief IP Counsel and Head of US Litigation

Primary responsibilities:

• Develop a deep understanding of the Group’s various technologies (cybersecurity, Internet of Things, video content management/security/delivery, and physical access security), 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 worldwide.
• Assess invention disclosures and conduct prior art analysis to develop invention disclosures and select for submission to patent committee.
• Participate in regular patent committee meetings to review invention disclosures and make patent operational decisions with 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 US 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 for strategic and quality review of preparation and prosecution of 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.

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.

Required Qualifications:

• B.S. in Computer Science, Computer Engineering, Electrical Engineering, or a comparable amount of work experience in those fields.
• Deep knowledge of U.S. patent laws and USPTO procedures.
• At least 1-2 years of patent preparation and prosecution experience of software applications.
• Exposure to foreign patent laws and/or patent office systems.
• 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 in-house supervising and/or providing strategic guidance in the preparation and prosecution of applications in foreign jurisdictions, in particular with Europe jurisdictions.
• Knowledge of foreign patent laws and/or patent office systems, preferably European patent laws and European Patent Office (EPO) 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.

Language Skills:

• English language fluency is necessary; some fluency in French beneficial.

Why you’ll love it here

If you are seeking a culture that supports growth, fosters success, and moves the industry forward, then Kudelski is where you need to be! Our rich and successful history is based on innovation and trust, serving clients of varying sizes and industries, including commercial, government and education.

With Kudelski, you can expect

• Immersion in an incredible culture and the vibe of a fast moving and growing organization full of opportunity.
• Opportunity to work with innovative, talented peers.
• Creative problem-solving and the ability to tackle unique, complex projects.
• Competitive compensation with a benefits package that protects you and your loved ones and allows you to pursue career growth with tuition reimbursement.
• Generous time off for rest, relaxation, and hobbies.
• Colleagues from across the globe and a company committed to diversity, equity and inclusion.

Nagra-Kudelski is an equal opportunity employer. All qualified applicants for employment will be considered without regard to race, color, religion, sex, gender identity, sexual orientation, national origin, status as an individual with a disability, veteran status, or any other basis protected by federal, state, or local law. EEO M / F / D / V

Compensation ranging from $150,000 to $170,000 + bonus. (Final compensation is determined by factors including location, candidate experience, education and skillset, as well as local market variances)