Patent Agent

Patent Agent
Lehigh Valley, PA

Job Description

This Patent Agent is responsible for providing a broad range of IP services to the Company, both directly and in conjunction with our outside IP counsel, with a focus on drafting and prosecuting patent applications, eliciting invention disclosures, contributing to the Company’s IP strategy, and analyzing competitive products for potential infringement issues.  This position reports to, and works closely with, the Director of Patents and will be a business partner who will collaborate effectively with Lutron’s extensive electrical, mechanical and software inventing and IP-savvy engineers.

Responsibilities:

  • Providing pro-active and cost effective and efficient IP services tailored to the needs and priorities of the Company’s business units, including interacting and managing relationships with technical, business and legal personnel.

  • Working closely with the internal IP attorneys to continually develop the IP Department.

  • Understanding the relevant Company businesses, including knowledge of relevant business and technology strategies, R&D activities and commercialization plans.

  • Collaborating with the business units and leadership to align IP strategies with business, technology and commercialization plans.

  • Implementing IP strategies in a cost- and resource-efficient way by providing a broad range of IP advice and services, including the securing and maintaining of appropriate worldwide protection for Company IP, and advising on the protection of confidential information and trade secrets, publication strategies, etc.

  • Eliciting invention ideas and disclosures from Company engineers.

  • Preparing and prosecuting patent applications, including engagement with engineers and product managers.

  • Managing outside counsel’s drafting and prosecution of patent applications.

  • Identifying IP risks to Company businesses worldwide and managing them, where appropriate with IP attorneys, including protecting Company IP from infringement and avoiding infringement of third-party IP.

  • Educating and training Company employees and contractors on IP issues; supporting the development and implementation of, and compliance with, internal policies and procedures.

  • Preparing, obtaining, and analyzing patent searches and providing assessments on patentability, prior art, non-infringement and validity.

  • Assisting with IP litigations, IPR’s, PGR’s and Reexaminations.

  • Assisting with IP licensing, monetizing or other creation of tangible value from IP.

  • Understanding and informing management regarding IP rights of competitors and third-party business partners.

  • Maintaining expertise in patent laws of the US; demonstrating ability to work within a field characterized by much uncertainty; maintaining a working knowledge of patent laws, regulations and processes globally.

  • Following and mastering relevant technology developments, both internally and externally;

  • Supporting the development of budgets and exercising appropriate control over internal and external costs.

 

Qualifications and Skills:

  • B.S. in Electrical Engineering required.

  • Advanced degree in Electrical Engineering preferred.

  • USPTO Patent Bar registration required.

  • Minimum of three years of engineering experience.

  • Some software/firmware experience preferred.

  • Demonstrated ability to be a pro-active team player and partner effectively with internal clients in a collaborative environment to achieve stated business objectives.

  • Self-starter with a sense of urgency, ability to prioritize, handle unanticipated situations effectively and work well under pressure.

  • Excellent written and oral communication skills, including the ability to convert complex patent concepts into useful business guidance.

  • Commitment to the highest standards of ethical conduct.

  • Highly motivated and positive attitude.

  • Ability to handle confidential and sensitive business matters.

 Lutron Electronics position as the leading manufacturer of lighting controls worldwide, our unsurpassed quality, the breadth and depth of our product offerings, and our commitment to servicing our worldwide customers have resulted in strong sales and profitability growth year over year. This growth has in turn allowed the company to continue to invest in recruiting and retaining the best people we can find to service our customers. Continuous growth has also fueled our ability to constantly develop new technologies and new manufacturing processes that in turn drive the creation of new or better products and services.  EOE/AA

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