Patent Data Analytics & Search Professional - Mechanical Eng.
: Job Details :

JOB SUMMARY

The Patent Data Analytics and Search Professional creates value for IP.com relationships through the application of academic and professional domain knowledge (such as chemistry, engineering, medical device or other disciplines) and intellectual property laws, rights, rules, workflows and applications. The incumbent: a). conducts patentability, infringement, invalidity, freedom-to-operate, clearance, and patent landscaping searches; b). assists in closing IP.com sales by demonstrating the application of domain knowledge to the successful use of company solutions; c). assists in the execution of Innovation Bootcamps; and d). occasionally demonstrates domain specific use case execution of IP.com software solutions.

General Duties

· Must be able to analyze and communicate analysis of results

· Assists sales team as a subject matter expert when called to assist in the sales process

· Seeks guidance from and collaborates with team members on IP related matters in order to produce the highest quality product possible

· Manages time and workload at the direction of management, scheduled delivery dates, and customer due dates

· Works with Account Executives to close new business, renewals, and ensure account retention.

· Balances the responsibilities of IP Search Specific Duties and Other Customer Specific Duties as described herein in a largely independent manner, with management guidance and support.

IP Search Specific Duties

· Performs patent searches: mainly patentability, freedom to operate, with some invalidity, evidence of use, and landscape/state of the art searching using the databases provided.

· Seeks training from more senior members to advance IP research skill set

· Maintains proficiency with patent laws and regulations, commercial patent databases and other proprietary databases that disclose technical publications, including recent court cases and the Manual of Patent Examining Procedure (MPEP).

· Performs Patentability studies by analyzing an invention disclosure and determining relevant prior art, including identification of specific sections of interest.

· Performs Freedom-To-Operate studies by analyzing a description of a technology relative to active patents and/or pending patent applications.

· Performs Invalidity studies by applying the rules of the MPEP with respect to what constitutes prior art, and finding relevant prior art missed during patent prosecution that speaks to the validity of the claims at issue, and further performing a mapping of claimed limitations to the prior art.

· Performs Evidence-Of-Use studies by analyzing products currently used in the market that may be infringing on a patent of interest.

· Perform Landscape/State of the Art searches on technologies by understanding a complex landscape of patents, patent applications, and NPL relevant to the project. This may include subdivision of the landscape into different features for searching.

· Creates charts and visualizations using IP.com tools, specifically InnovationQ+, for inclusion with professional search reports based on client needs.

• Analyzes patent file histories

Other Customer Specific Duties

· Demonstrate IP.com's Solutions to prospective clients, including deep-dive demonstrations and answering of related technical questions of the prospect.

· Demonstrate as required pre-sales in coordination with an account executive, during the sales process as part of training or check-in meetings, and post-sales as part of achieving client objectives to promote customer satisfaction and renewal, and reach net retained revenue goals.

· Perform qualitative analysis of patent and non-patent technical literature

· Communicate effectively with customers in determining the scope of searches and draft informative reports that clarify and summarize search results.

· Conduct long-term patent landscape studies to identify trends in a technology field, deliver competitive intelligence and identify potential research and licensing opportunities.

· Perform qualitative analysis of patents and patent portfolios from a legal, technical and business perspective

• Identify potential licensees

· Understand how to pitch on-the-fly the appropriate solution based on a needs-based analysis of the prospects' business problem.

TECHNOLOGY/ EQUIPMENT/ TOOLS

· Expert level user of commercial patent search tools and analytical software, specifically IP.com's InnovationQ+ and IQ Ideas+.

· Expert level user of MS Office software

Qualifications

Education and Experience Requirements

• Must have the ability to comprehend the application of Mechanical Engineering and mechanical design to a wide variety of fields of Industry, including transportation, energy, construction, manufacturing, biomechanics, robotics, consumer products and appliances, HVAC systems, power tools, oil & gas exploration, and aerospace.

· Bachelor's degree is required in Mechanical Engineering

· 3-5 years of Prior Art searching experience

· Research and analysis experience with a law firm, corporate IP office or search firm; a plus if the work provided experience with workflows that result in innovation creation.

· Ability to utilize software including IP.com's InnovationQ+ and IQ Ideas+ with use case application.

• Compliance with ITAR/Export Control regulations, which can be demonstrated by US citizenship.

Skills and Competencies Requirements

· Knowledge of patent law, regulations and the MPEP

· Understands all sections of a patent, and the importance of each section from a legal prior art search perspective

· Expert in key term searching and constructing structured Boolean search queries

· Excellent attention to detail, analytical and critical thinking, proof-reading abilities, interpersonal communication and organizational skills

· Expert in reading, interpreting, and extracting key concepts from invention disclosures, patents, and technical papers

· Exceptional oral communication, written communication and customer service skills

· In-depth knowledge of technical literature in the area of subject matter expertise.

· Highly skilled developing a search methodology and in conducting searches.

· Strong time management skills and dependable in completing quality projects against deadlines.

Will allow telework from home with periodic travel required to client and IP.com offices.