A Career at HARMANAs a technology leader that is rapidly on the move, HARMAN is filled with people who are focused on making life better. Innovation, inclusivity and teamwork are a part of our DNA. When you add that to the challenges we take on and solve together, you’ll discover that at HARMAN you can grow, make a difference and be proud of the work you do every day.
About the RoleHarman International is seeking a patent attorney with patent prosecution experience who also will assist with and handle general intellectual property matters, licensing and contractual matters, utility/design patent prosecution, enforcement of IP, researching infringements, drafting C&D letters, patent litigation, patent clearances, and patentability and free to operate reviews and analysis.
The ideal candidate will have hands-on transactional experiencehandling basic and complex intellectual property and commercial legal issues, including IP licensing agreements, and a strong understanding of patents, trademarks, copyrights and trade secrets to develop, advise and counsel clients on protection, risk avoidance and enforcement strategies. Relevant experience could include: software and technology licensing in the context of use in products, cloud platforms and other applications, software and technology development and related transactions; intellectual property transactional support for procurement and sales; product and patent analysis counseling; and litigation support.
Candidates must have experience in global IP protection and management strategies, ranging from filing to maintenance, leading whitespace/landscape studies, clearance opinions, and patentability evaluations, and supporting IP due diligence in M&A transactions and IP acquisitions and divestitures.
What You Will Do
- Oversee a global network of outside counsel and provide guidance and instructions based on principles of patent prosecution, the technology/product and roadmaps, and corporate strategy, and global portfolio maintenance decisions.
- Support various members of the Legal team in M&A transactions with respect to IP due diligence.
- Manage a docket of patent matters in one or more technology areas including preparing and prosecuting patent applications before the USPTO.
- Collaborate across law department groups, business units and functions to improve intellectual property operations and business processes.
- Draft, review and negotiate routine types of IP terms and clause for agreements, including nondisclosure, development, collaboration and licensing agreements, with, clients, suppliers, and other law department groups.
- Directly interact with the business product teams and research technology teams to support new product and project development.
- Advise and counsel internal business units on various IP matters with a particular focus on global patent issues.
- Interact directly with internal teams to harvest invention disclosures and provide IP training.
- Support internal clients by providing strategic patent advice on Harman’s patent portfolio and managing risk with respect to third party portfolios.
- Participate in intellectual property review board meetings.
- Assist in patent divestitures, acquisitions and licensing
- Work with a global team of IP professionals made up of attorneys, paralegals and IP specialists to define and refine processes used in global IP operations.
- Provide patent analysis for all contexts, including litigation, potential acquisition, and licensing.
- Assist in proactive, strategic management of IP litigation and patent assertions; and
- Collaborate with IP litigation counsel and provide support in software and patent litigation matters.
What You Need
- The candidate should have Juris Doctor and Bar admission (or equivalent in jurisdiction), and registered before the USPTO; knowledge of foreign patent practice and rules a plus.
- Technical background is not required however, a background or strong familiarity with electrical engineering, physics, computer science, mechanical engineering, audio components and/or acoustics is a plus.
- Must have 3 years of patent prosecution experience with a strong background in global IP law.
- Law firm, in-house or other comparable experience with large and complex IP portfolios a plus.
- Drafted and prosecuted patent applications before the USPTO.
- Knowledge of utility, design, copyright and other IP areas needed.
- Excellent patent analysis abilities, including development of non-infringement/infringement, invalidity/validity and claim construction positions
- Excellent web-based and other investigation and research skills/experience are needed.
What is Nice to Have
- Should have sound computer skills including IP maintenance database software (e.g. Anaqua), PPT and Excel.
- Experience drafting IP related contractual documents such as co-existence and settlement agreements, and licenses highly desired.
- Ability to work independently and cross-functionally.
- Ability to prioritize and appropriately manage risk in a corporate legal environment.
- Desire and ability to work in a fast-paced and challenging environment.
- Flexibility and a positive attitude.
- Excellent work ethic.
- Work well in a team environment.
What Makes You Eligible
- Willingness to travel at least 10-15% of the time;
- Willingness to work in a HARMAN office in Farmington Hills, Michigan;
- Willingness to spend significant amounts of time communicating with and/or spending time in our worldwide offices in various time zones; and
- Willingness to submit to a background screen and a drug test.
What We Offer
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HARMAN is an Equal Opportunity /Affirmative Action employer. All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability or Protected Veterans status. HARMAN offers a great work environment, challenging career opportunities, professional training and competitive compensation. ()