Job Listing - Patent Counsel

Patent Counsel - Dallas Texas

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Patent Counsel
Location: Dallas, Texas, U.S.
Date Posted: December 02, 2013
Contact: Kendra Peters-Ross, Talent Acquisition and Project Management Partner
Company\Firm: Essilor of America, Inc.
Job Description: The world’s leading ophthalmic optics company, Essilor designs, manufactures and markets a wide range of lenses to improve and protect eyesight. Its corporate mission is to enable everyone around the world to access lenses that meet his or her unique vision requirements.
To support this mission, the Company allocates around €150 million to research and development every year, in a commitment to continuously bring new, more effective products to market. Essilor’s flagship brands are Varilux®, Crizal®, Definity®, Xperio®, Optifog™ and Foster Grant®.
It also develops and markets equipment, instruments and services for eye care professionals.
Essilor reported consolidated revenue of €4.9 billion in 2012 and employs nearly 50,700 people. It operates 22 plants, a total of 400 prescription laboratories and edging facilities, as well as several research and development centers around the world.

We currently have a Patent Counsel career opportunity in Dallas, TX.

Position Summary
Position: Member of the Intellectual Property team reporting to the ESSILOR Group Parent Company in Charenton-Le-Pont (Paris, France) but located at the U.S. Headquarters in Dallas, Texas. Reporting to the IP Counsel in charge of US activities within ESSILOR Group IP Department (IPD).

Responsibilities and Accountabilities:

In charge of patent filings and prosecution for inventions originating from any U.S. sites of ESSILOR Group, including R&D, Global Engineering, Marketing and Business Unit activities. Including:
• Harvesting and protecting such inventions
• Ensuring timely and appropriate protection commensurate to their strategic value and in line with the strategy defined for the related ESSILOR Group patent portfolio by the corresponding Patent Manager.
• Participating to the Patent Committee meetings, organized by the IP Department, where patent filings or drop decisions are taken
• Providing the IP Portfolio management team with new invention submissions information and any patent prosecution information for appropriate input in the global ESSILOR patent database
• Close interaction with the Charenton patent attorneys handling Essilor patents in the same technical field

Provide valuable input related to the Group Global IP Strategy from a U.S. law perspective
Supporting the patent strategy of the Group, including participating in ensuring a pro-active patenting policy and ensuring that local operational teams are fully aware of the significance of intellectual property matters and ESSILOR IP strategy.
Such support would include IP awareness sessions for the local operational teams to promote the IP culture and innovation developments (IP including inventions, know-how, copyrights, trademarks, etc.)
Advising (and acting as the case may be, with the legal department teams and the related Patent Group Manager) on patent matters in contractual relationships (e.g., collaboration agreements, licenses, M&A issues) as well as freedom to operate vs. patents studies, U.S. patent litigation or claims
Collaborating with the Patent Interfaces and IP Champions of the operational departments.

Critical Competencies/Behaviors:
• Ability to balance the legal issues of a project with the goals of the business through the demonstration of strong, pragmatic business acumen and the ability to recognize the business consequences of legal advice
• Strong advocacy skills
• Ability to function autonomously, yet understands necessity of advising management of work progress and any unusual situations
• Skilled at managing multiple tasks simultaneously and effectively
• Ability to work independently and efficiently under time pressures and deadlines in a fast-paced environment
• Ability to work with cross-functional and international teams
• Team worker
• Adaptable to changing environments
• Exercise of sound judgment
• Strong interpersonal skills including ability to engender trust, respect and confidence
• Excellent written and oral communication skills including the ability to communicate and interact effectively at all levels of the organization
• Ability to travel

Education, Qualifications and Work experience:
• JD from an accredited law school
• Licensed to practice law in the United States
• Qualified as a U.S. patent attorney to practice before the US Patent & Trademark Office
• B.S. Degree in Computer Science or electrical engineering
• Strong practice in drafting software-related, IT, Business methods and e-commerce patents
• 4-6 years of active practice as a patent attorney (patent prosecution activities as well as freedom to operate studies and preferably patent (pre)litigation)

Optional but valued:
• Some knowledge of EP patent law & practices
• Working knowledge of languages in addition to English

Job Number: EA23805
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