Patent Attorney

Job Locations US-PA-Coopersburg
ID
2022-1708
Category
Legal
Position Type
Regular Full-Time

Overview

Lutron Electronics, a world leader in lighting controls and smart home automation, is looking for a highly motivated Patent Attorney to join its IP team. This position will be responsible for providing a broad range of IP services to the Company, both directly and in conjunction with our outside IP counsel. Particular focus will be on eliciting invention disclosures, drafting and prosecuting patent applications worldwide, contributing to the Company’s global IP strategy, analyzing competitive products for potential infringement issues, and advising on third-party IP rights. This position reports to, and works closely with, the Senior Director of Intellectual Property and will be a business partner who will collaborate effectively with Lutron’s extensive electrical, mechanical, and software engineers.

Responsibilities

  • Elicit invention disclosures from company engineers

  • Prepare and prosecute patent applications with ongoing engagement from engineers and product managers

  • Manage outside counsel’s drafting and prosecution of patent applications

  • Provide pro-active, cost-effective, and resource-efficient IP advice and services tailored to the needs and priorities of the Company’s business units

  • Build and manage relationships with technical, business, and legal leaders to understand Company businesses and align IP strategies with relevant R&D activities, commercialization plans, and business and technology strategies

  • Advise on potential risks to Company businesses worldwide regarding third-party IP rights.

  • Advise on the protection of confidential information, trade secrets, etc.

  • Work closely with the internal IP team to continually develop the IP Department

  • Educate and train Company personnel on IP issues and support the development and implementation of, and compliance with, internal policies and procedures

  • Prepare, obtain, and analyze patent searches and provide assessments on patentability, prior art, non-infringement, and validity

  • Assist with IP litigations, IPR’s, PGR’s, and Reexaminations

  • Assist with IP licensing, monetization, and other means of creating tangible value from IP

  • Understand and inform management regarding IP rights of competitors and third-party business partners

  • Maintain expertise in patent laws of the US and working knowledge of global patent laws, regulations, and processes

  • Follow and master relevant technology developments, both internally and externally

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

Qualifications

  • B.S. in Electrical Engineering or Computer Science required

  • Advanced degree in Engineering preferred

  • USPTO Patent Bar registration required

  • Licensed attorney in one or more states required

  • 3-5 years of experience drafting patent applications and prosecuting US and foreign patent applications required

  • 2-3 years software or hardware engineering experience required 

  • Successful candidates will have experience drafting and prosecuting patent applications in the electrical and software fields, with additional experience in mechanical and design applications preferred

  • Experience as a patent agent/attorney with a mix of law firm and in-house experience or solely in-house experience. In-house experience with a manufacturing company preferred

  • Litigation experience preferred

  • Demonstrated ability to be a pro-active team player and to 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

  • 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 also has 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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