IP Specialist (Patent Counsel 2)

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  • It's fun to work in a company where people truly BELIEVE in what they're doing!
    We're committed to bringing passion and customer focus to the business.

     

    If you like wild growth and working with happy, enthusiastic over-achievers, you'll enjoy your career with us!

    We are looking for a creative and confident self-starter who is a team player but is also comfortable working autonomously. Being able to handle multiple activities and manage a variety of legal matters often under time pressure is a key component to your personality. The candidate must possess strong interpersonal and communication skills (written and oral) to establish credibility and facilitate an effective working relationship with a wide range of Company representatives. 

    Other critical skills include business acumen, initiative, innovation, prioritization/time management, attention to detail, strategic thinking, goal and team orientation, and the ability to develop relationships with a variety of people at different levels and functions throughout the Company. 

    Responsibilities include:

     

    Product Clearance:

    • Conduct and interpret prior art searches;
    • Conduct infringement analysis;
    • Review, gather and analyze technical literature;
    • Identify possible work-arounds;
    • Assess patent validity / develop invalidity analysis. 

     

    Invention Disclosure Review:

    Quickly review and gain an understanding of technical aspects of Company inventions and/or technical search concepts then perform extensive database research for: 

    • Evaluating the patentability of innovations;
    • Review and comment on draft claim(s) for the invention. 

     

    Litigation Support:

    • Conduct infringement analysis;
    • Assess patent validity / develop invalidity analysis;
    • Assist in the preparation, review, and submission of patent challenges (e.g. re-exams, reviews, pre-issuance submissions, and oppositions). 

     

    Conduct Training and Outreach:

    • Provide IP training to the business units in order to educate the Lumentum technical and scientific community in IP matters;
    • Lead IP brainstorming with members of the business units;
    • Partner with business units to facilitate technology initiatives and IP protection. 

     

    M&A support will include patent portfolio evaluation;

     

    Patent Application Review and Prosecution support will include reviewing draft patent applications and support external patent agents regarding drafts/OA responses/prosecution.

     

    Requirements: 

    • 4+ years of experience in intellectual property law (including IP-related counseling, litigation, and licensing);
    • 5+ years of technical experience in a field related to Lumentum’s products;
    • Experience in a major law firm will be considered an asset.

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