Lead - Intellectual Property Attorney

Bajaj Electricals Ltd; Mumbai; On-site; INR 2,800,000 - 5,600,000; Full time

Job summary

Bajaj Electricals Ltd is seeking an experienced IP professional to lead end-to-end protection for its brands and innovations. You will head a small team and collaborate with R&D leadership to integrate IP into product development.

You will drive patent drafting and prosecution, FTO analyses, and manage trademarks, design registrations, renewals, and global IP portfolios. A law degree, patent agent registration, and NDA experience are essential.

Qualifications

• Minimum 12–14 years of drafting and prosecution of patent applications.
• LL.B. with TM availability searches and portfolio management experience.
• Experience in design registrations and prosecution.
• Registered Patent Agent and TM Attorney.

Responsibilities

• Strategize and manage end-to-end IP protection across patents, trademarks and designs.
• Advise on patentability and freedom-to-operate for inventions with inventors.
• Draft and file patent specifications; respond to patent office actions.
• Manage TM portfolio, renewals, oppositions and global watch services.
• Oversee design registrations and lifecycle management; coordinate with external counsel.

Skills

Patent Drafting

Freedom to Operate

Trademark management

Design registrations

Patent prosecution

IP portfolio management

TM oppositions

Education

LL.B.

Registered Patent Agent

TM Attorney

Tools

Thomson Innovation

Questel

Job description

Strategizing end to end IP protection for the Company including:

(a) Strategizing IP protection of Iconic brand “Bajaj” with its suffix brands (and other smaller brands and copyrights);

(b) Strategizing support for innovation in products and designs) working closely with the R&D leadership; and

(c) Risk mitigation by structuring, building and maintaining process check points in the products development cycle so as to ensure Company is not in breach of third party IP.

This role manages a team of 3 (Patents Attorney; Trademarks Attorney; and Trademarks Support) and as a team they manage the below key areas:

Inventions -

Managing Protection of Patentable Inventions and Freedom to Operate analysis:

• Advise on Patentability - including evaluating inventions with inventors.
• Advise on Freedom to Operate - including analyzing issued or pending patents to assess whether a product / process may be considered to infringe any patent(s) owned by others.
• Patent Drafting and filing – Draft specifications (detailed descriptions) covering techno-legal aspects of patentable inventions.
• Review changes suggested by inventors.
• Suggest modifications or extensions to the definition of the invention.

• Examination of Patents
• Preparing responses to examination reports from patent examiners
• Managing hearings before patent examiners and preparing responses.
• Advise on white-space analysis - including preparing reports of existing, granted and filed patents and informing the inventors/designers of a space which can be explored further for development of new products, services and processes.
• Exploratory searches - Supporting the development team with aspects related to patents filed by third parties

Managing Brands (including Trademarks and Copyrights)

• Conducting Trademark Availability Searches and providing advisory to business of registration on TM
• Registration of various Trademark in India and across globe and coordinating with business and external advocates
• Promptly conducting Trademark watch in Trademark Journals taking action against similar trademarks.
• Coordinating with external lawyers for watch services across globe
• TM Oppositions and Proceedings Management
• TM Renewals
• Managing the entire portfolio of TM and updating MIS

Managing Designs

• Advising business on Design Registrations. Ensuring registration of designs coordinating with internal and external stake holders
• Design Prosecution Management
• Timely Renewals of designs
• Managing different IPR portfolios, such as Patent, TM, Industrial Design, Copyrights.
• Updating records / MIS and tracking from time to time
• Life cycle management of IPR portfolio
• Archival and retrieval of IPR documents
• Conducting IPR awareness training
• Acting on leads provided by external agencies/ business / various sources and promptly initiating action.
• Conducting raids through the external agencies
• Preparing report based on feedback of raid provided by the external agency and submitting internally

• Candidate should be a registered Patent Agent with the Indian Patent Office with minimum 12-14 years of experience in drafting and prosecution of patent applications (at a law firm or in-house IP department) and having thorough understanding and experience of searching across various paid and unpaid databases including Thomson innovation, Questel and other relevant databases.
• Candidate should be lawyer (LL.B), with experience in conducting TM availability searches, and providing advisory on availability of marks from TM Registry’s database, prosecution, TM oppositions, and overall management of domestic and international TM portfolio.
• Candidate should also have experience in designs (including managing design novelty searches, filing, prosecution and other allied matters)
• Bachelors Degree in Law
• Registered Patent Agent and TM Attorney
• Desired Qualification: Experience of managing non-disclosure agreements (NDA)
• Experience: 12 - 14 years of experience
• Industry Preference: IP law firm practice