Lead - Intellectual Property Attorney

Job purpose & Scope: IP Attorney
Major Areas of Responsibilities:
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:
1. 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.
o Examination of Patents
 Preparing responses to examination reports from patent examiners
 Managing hearings before patent examiners and preparing responses.
o 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.
o Exploratory searches - Supporting the development team with aspects related to patents filed by third parties
2. Managing Brands (including Trademarks and Copyrights):
o Conducting Trademark Availability Searches and providing advisory to business of registration on TM
o Registration of various Trademark in India and across globe and coordinating with business and external advocates
o Promptly conducting Trademark watch in Trademark Journals taking action against similar trademarks.
o Coordinating with external lawyers for watch services across globe
o TM Oppositions and Proceedings Management
o TM Renewals
o Managing the entire portfolio of TM and updating MIS
o Drafting IPR license / assignment deeds
3. Managing Designs:
o Conducting comprehensive FTOs
o Advising business on Design Registrations. Ensuring registration of designs coordinating with internal and external stake holders
o Design Prosecution Management
o Timely Renewals of designs
4. Portfolio management:
o Managing different IPR portfolios, such as Patent, TM, Industrial Design, Copyrights.
o Updating records / MIS and tracking from time to time
o Life cycle management of IPR portfolio
o Archival and retrieval of IPR documents
o Conducting IPR awareness training
5. Counterfeit actions:
o Acting on leads provided by external agencies/ business / various sources and promptly initiating action.
o Conducting raids through the external agencies
o Developing information network reporting counterfeit activities.
o Preparing report based on feedback of raid provided by the external agency and submitting internally
Essential Qualification:
• 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

Work arrangement
No