Intellectual Property Attorney

Responsibilities

• Collaborate with company engineers to elicit invention disclosures
• Prepare and prosecute US and foreign patent applications with ongoing engagement with engineers and business leaders
• Manage US and foreign patent counsel in drafting and prosecuting US and foreign patent applications
• Manage ongoing strategic maintenance and growth of Lutron’s US and foreign patent portfolios
• Aid marketing, sales, and business leaders in branding new products and strategically using, maintaining and growing Lutron’s worldwide trademark portfolio
• Prepare, obtain, and analyze patent searches and provide assessments on patentability, non-infringement, and validity
• Prepare, obtain, and analyze trademark searches and provide assessments on worldwide registration, use, and non-infringement
• Build and manage relationships with technical and business leaders to understand Lutron’s businesses and align its IP strategies with relevant R&D activities, commercialization plans, and business and technology strategies
• Provide proactive, cost-effective, and efficient IP advice and services tailored to the needs and priorities of Lutron’s business units
• Work closely with the internal IP team to continually develop the IP Department to improve processes
• Maintain expertise in US IP laws, regulations, and processes (particularly in the area of patents and trademarks), and working knowledge of global patent and trademark laws, regulations, and processes
• Follow and master relevant technology developments, both internally and externally

Qualifications

• Bachelor’s or Master’s degree in Electrical Engineering, Computer Engineering, Mechanical Engineering, Computer Science, Physics, or related discipline
• Juris Doctor (JD) degree
• USPTO Patent Bar registration required
• Licensed attorney in one or more states required
• 7+ years of experience drafting patent applications and prosecuting US and foreign patent applications
• Proven ability to exhibit strong executive presence, including professional demeanor, sound judgement and the ability to navigate complex organizational dynamics
• Experience as a patent agent/attorney
• Willingness and ability to travel to US engineering offices as required, up to 10% of the time
• 1+ year of software or hardware engineering experience preferred
• Experience drafting and prosecuting patent applications in the electrical and software fields, with additional experience in mechanical and design applications preferred
• Trademark experience preferred