Intellectual Property Manager – Patents & Innovation Strategy

Responsibilities

• Work with R&D and other inventor groups to identify areas of innovation and possible new patent applications or trade secrets.
• Regular communications with inventors to instruct them in how to best fill out Invention Records, to advise as to the appropriate time to submit Invention Records, etc.
• Continuously educate inventors on both process and overall understanding of IP laws, pitfalls and best practices to best handle Novelis’ IP.
• Understand in detail from the inventors the scope and impact of their ideas, help them with a strategy on how to complete their invention record filing and assess the optimal strategy for handling the invention records based on other IP filing status both internally and externally to Novelis.
• Influence and engage inventors on their full support and collaboration in pursuit of the recommended IP protection strategy/ approach.
• Manage the filing of new patent applications, analyze prior art, review claim and specification scope.
• Utilize both technical and legal expertise to support the IP Team in the procurement and protection of patents, including supervising outside counsel in their preparation of patent applications, review of patent applications to ensure adequate scope of coverage and alignment with Novelis’s IP protection strategy.
• Review and endorse IP-related language in contracts on Novelis’s behalf.
• Review the legal terms pertaining to IP on legal documents including commercial, technology, alliance, and any other agreements impacting Novelis’s technology.
• Provide input on edits as they relate to IP.
• Manage the entire patent process including prosecution of pending applications, portfolio reviews, and patent renewals, within designated technical fields.
• Work with GTDs or their designees to obtain input during prosecution to ensure that final granted claim scope aligns with Novelis’s commercial and business objectives, determine whether to maintain issued patents in various jurisdictions, assess the strategic value of patent families to Novelis’s patent portfolio, etc.
• Be a trusted business partner and thought leader with the GTD’s for our commercial value streams to build an aligned strategy for protecting Novelis intellectual property.
• Regularly review patent watches and topic alerts to identify threats to Novelis, and work with inventors, GTDs, and the IP Team re how to best respond to those threats.
• Coordinate oppositions against competitor patents.
• Work with internal technical teams, the IP Team, and outside counsel to determine whether and when to oppose competitor patents, obtain the necessary supporting technical documentation to deliver a successful outcome, review and analyze opposition-related documents including legal arguments.
• Promote awareness of Novelis’s IP protection process and strategy through training sessions.
• Support the IP Team in its ongoing training and education efforts globally.

Qualifications

• Bachelor of Science or Engineering (mechanical engineering or similar degree); USPTO Registration
• 5+ years acting as a patent attorney or patent agent in a law firm or similar in-house role.
• Extensive experience with preparing and prosecuting patent applications, extensive knowledge of U.S. patent law with high familiarity with key foreign jurisdictions (WIPO, Europe, Brazil, Korea, China, etc.).
• Analytical, strong communicator (written and oral), responsive, ability to multi-task and take on a variety of work.