Senior Intellectual Property Specialist

The position is responsible for cultivating and maintaining the global intellectual property portfolio for an ophthalmic medical device company. 

Key Responsibilities

• Work with engineers in multiple global sites to identify patentable inventions, submit invention disclosures, and perform patentability searches on potential inventions
• Work with external counsel to prosecute and maintain the division’s global patent and trademark portfolio. Conduct patent validity searches as well as freedom-to-operate and infringement analyses for new projects/designs
• Monitor competitor patents and provide recommendations and actions to mitigate potential IP risks. Assist engineers to test and analyze competitor products for possible infringement
• Create global IP training program and provide relevant training and advice to all scientific staff

Experience

• 3+ years of managing intellectual property portfolios in the medical device or life science field

Education

• Bachelor degree in Optical, Material, or Mechanical Engineering (or a related engineering field). Master Degree preferred

Skills

• Knowledge of the patent prosecution process in Japan and preferably the US
• Experience in conducting patent and prior art searches in patent databases and systems
• Experience in transactional IP including contracts, licenses, and agreements is a plus
• Proactive and able to work independently. Must be able to work cross-functionally and across multiple time zones
• Must have excellent verbal and written communication skills in both Japanese and English

Travel Requirements

• 5%