Key Responsibilities

• Collaborate closely with engineering and technology teams to ensure generation of high-quality invention disclosures in the field of AI and call center automations. Coordinate with your manager and offer recommendations on invention disclosures for assisting in filing decisions.
• Prepare high quality patent applications (about 30 per year) originating from Uniphore’s global locations for filing before the USPTO, European Patent Office, Indian Patent Office, PCT or other jurisdictions. Help preparing responses to Office Actions (OA) globally and prosecute patent applications before the Indian Patent Office (about 20-30 OA and 40-50 hearings per year but may vary).
• Help stimulate innovation by helping prepare training presentations, attend group discussions with engineering and technology teams to capture innovation, conduct patent landscape analyses; assist with efforts on claim analyses, patenting strategy, freedom to operate, and open-source software, revieing contracts with IP clauses.
• Ability to review contracts with IP clauses, support in matters relating to infringement, litigation, and licensing, and oversee paralegal work is desirable. 

Required Qualifications

• Qualified Indian Patent Agent with at least 5 years of post-qualification experience.
• Demonstrated ability to respond to official actions and attend hearings.
• Demonstrated ability to perform patentability searches.
• Proven track record in a reputed law firm or as an in-house counsel in a large multinational or a global Indian company.
• Bachelor’s degree or above in science or engineering.
• Proficient in patent drafting and prosecution across multiple jurisdictions and a strong understanding of the Indian IP system and laws, and good understanding US or Europe IP system and laws.
• Ability to work independently and as part of a team and ability to manage multiple priorities.
• Experience working in cross-functional teams involving multiple stakeholders.
• Excellent written and oral communication.
• Good commercial awareness and business acumen.
• Ability to work in a matrix organization.

Desired Characteristics

• Exposure to AI/ML Patenting, Understanding of SaaS, PaaS, BDaaS. Able to show Granted/Published Patent applications across various jurisdictions (US, EP, CN, JP and others).
• Law degree.
• Patent landscape search and analysis.
• Represented the client/organization during Patent office hearings for several patent applications.
• Exposure to contracts, SaaS industry, understanding of copyright and DMCA issues, Software licensing.
• Exposure to Personal data privacy laws, GDPR.
• Familiarity and willingness to work with docketing systems.

Skills

• MS Office, Presentation, Proactive Legal research, Quick learner.
• Integrity, sense of ownership, and strong professional judgement.
• Continuous improvement and agile mindset.
• Excellent stakeholder and people management skills.
• Focus on deliverables, attention to details, and results driven.