Job Description

Date: Apr 12, 2023



Location: Mumbai, MH, IN



Company: Bajaj Electricals










Job Title

Internal -> Lead - Intellectual Property Attorney External -> Chief IP Attorney (CIPA)

Job Code



Department/ BU

Legal

Location

Mumbai



Reporting To

Head of Department (Legal)



Organizational Description




Job purpose & Scope



IP Attorney



Major Areas of Responsibilities



Strategising end to end IP protection for the Company including: (a) Strategizing IP protection of Iconic brand \xe2\x80\x9cBajaj\xe2\x80\x9d 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 \xe2\x80\x93 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
  • Trademark Registrations and prosecution
  • TM Oppositions and Proceedings Management
  • TM Renewals
  
  

• Managing Designs:
  • Designs FTOs
  • Design Registrations
  • Design Prosecution Management
  • Renewals
  
  

• Portfolio management:

• Managing different IPR portfolios, such as Patent, TM, Industrial Design, Copyrights.
• Updating the same through external agencies and tracking from time to time
• Govet. deadlines management

• Counterfeit actions:

• Acting on leads provided by external agencies, which includes seeking internal approvals
• Conducting raids through the external agencies
• Preparing report based on feedback of raid provided by the external agency and submitting internally

Person Specifications



Essential Qualification:

• Candidate should be a qualified engineering degree holder (B.E. / B.Tech.) and 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\xe2\x80\x99s 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 Mechanical / Electrical Engineering
• 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



Sr. No.

Functional Competencies

Critical

Desirable



1.

Good IT Skills

YES



2.

Analytical Skills

YES



Sr. No.

Behavioral Competencies

Critical

Desirable



1.

Strong communication skills

YES



2.

Language Skills \xe2\x80\x93 English, Hindi

YES



Any specific requirement

• Sound knowledge of Indian Patent and Design laws
• Candidate should have the experience of:
  • carrying out patentability searches, drafting, reviewing, filing, prosecution and other allied matters.
  • conducting freedom-to-operate (FTO) searches and providing opinions based on FTO searches.
  • managing design novelty searches and TM availability searches, filings, prosecution and other allied matters.
• Attention to detail
• Good communication skills
• Sound scientific and technical knowledge
• Good analytical skills