In-house Commercial IP Manager

In-house Commercial IP Manager

Caselton Clark



24 November 2017

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This role is with a UK based energy technology company that draws on thermodynamics, industrial gas technology, power generation and process engineering to create a more efficient and cleaner energy resource. This company has developed a proprietary energy storage technology, being the first to openly build and work on this type of technology.

There is a need for a bigger focus on the company's IP portfolio and how to maximise its effectiveness in a commercial context. Thus, they are seeking an enthusiastic, flexible Commercial IP Manager/Project Engineer, who wishes to develop their career into the commercial space, and to use their engineering knowledge within both a technical and a business context.

The role will report to the Director of Operations, but will require working with both the Engineering and Commercial teams.

Key Responsibilities

The position would be close to a 60/40 - IP/Commercial split. Initially the role will be focused on the following:

Contracts and Commercial - Provide contracts and commercial support across the company (currently UK HQ and US subsidiary), including:

Developing and maintaining agreements management processes for all commercial agreements (sale, purchase, non-disclosure, project and general and admin), with support from the administration team.

Maintaining and improving company templates of standard terms.

Reviewing all modifications to standard terms, and all external terms and conditions from counterparties, advising on possible amendments to protect company from risk, and identifying points to be raised with external legal counsel.

Communicating the obligations of new agreements to relevant parties across the company.

Intellectual Property - Focus on bridging between the IP Project Engineer, who administers the company's portfolio of patents, the Engineering team generating the IP, and the Management team:

Supporting the capture, documentation and protection of knowledge and IP that we are generating, which may include initial drafting of patents and other documents, with support from the Engineering team.

Maintaining and developing our database of knowledge.

Working with the IP Project Engineer in interpreting the findings of patent examiners' reports, and defining strategies to overcome their objections.

Conducting patentability, freedom to operate and competitor landscape searches of patents databases.

Interpretation and analysis of research findings, and producing reports and presentations.

Ensuring the security and confidentiality of information and documentation generated.

Generating the IP budget, and controlling costs within this budget.

Candidate Requirements

Candidates must have a background in Intellectual Property.

It would be very advantageous if the candidate had a background in Mechanical Engineering, specifically thermodynamics. An energy-related background would also be acceptable.

Experience of contract negotiation and drafting, and familiarity with standard forms of contract used in the engineering or energy sectors, would be an advantage.

This may be open to a patent engineer with a strong commercial background or in-house experience.
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