Position Description
Job Summary
The Patent Portfolio Manager is responsible for leading and assisting with the development and execution of CertainTeed's proprietary position in product, solution, process, and technology-based innovation for CertainTeed R&D and associated business groups. The Manager works closely with, and under the direction of, in-house IP counsel and R&D leader to provide strategic IP guidance and support including guidance on short- to long-term decisions that enable a compelling intellectual property portfolio to key business stakeholders.
The Manager directly supports the day-to-day execution of activities and tasks associated with IP management covering technical analysis, patent prosecution, portfolio management, trade secrets, and know-how, by:
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- Ownership of IP portfolio including an overview of patents, capturing the value of the portfolio based on alignment of business strategy and position vs. competition
- Developing a knowledgeable and clear understanding of business and R&D innovation roadmaps for new product and technology development, including areas for differentiation.
- Carrying out analyses to assess competitive patents, freedom to operate, validity and infringement, and litigation support. Periodically map patent landscapes for target areas.
- Supporting prosecution to ensure the broadest protection of proprietary technologies
- Supporting the development and implementation of IP strategies
- Supporting preparation and prosecution of patent applications and assisting in responses to office actions
- Review and filtering of portfolios for maintenance fee continuation
- Assisting in due diligence in exploring acquisition and external collaboration opportunities
The Manager should be able to quickly understand new technologies and inventions, generate technology landscape reports, host invention harvest meetings, and lead IP review committees by working closely with inventors/engineers, in-house counsel, outside patent attorneys, and senior management. The manager is expected to provide processes and tools to proactively manage the IP portfolios and strategies for each of the core product and technology segments they are assigned. In addition, the Patent Portfolio Manager will assist in NDA/JDA (nondisclosure agreements and joint development agreements) development plus provide education and training on patent and other IP issues.
The Manager shall maintain confidentiality of sensitive material relating to intellectual property, legal and business matters. The Manager acts as an internal consultant to many departments, especially R&D, Manufacturing, and Marketing.
Required Qualifications
- Bachelor's Degree +12 years' experience, Master's Degree + 7 years' experience or PhD + 3 years' experience in Materials Science or Engineering with formal training and experience in patent law and intellectual property management.
- R&D, Product Design and Development, IP Management with 3+ years' experience as a registered US Patent Agent preferred
Company Summary
Through the responsible development of innovative and sustainable building products, CertainTeed, headquartered in Malvern, Pennsylvania, has helped shape the building products industry for more than 110 years. Founded in 1904 as General Roofing Manufacturing Company, the firm's slogan "Quality Made Certain, Satisfaction Guaranteed," inspired the name CertainTeed. Today, CertainTeed is a leading North American brand of exterior and interior building products, including roofing, siding, fence, decking, railing, trim, insulation, drywall and ceilings.
A subsidiary of Saint-Gobain, one of the world's largest and oldest building products companies, CertainTeed has more than 6,300 employees and more than 60 manufacturing facilities throughout the United States and Canada. www.certainteed.com
Legal Statement
Saint-Gobain provides equal employment opportunities (EEO) to all employees and applicants for employment without regard to race, color, religion, sex, gender, sexual orientation, gender identity or expression, national origin, age, disability, genetic information, marital status, amnesty, or status as a covered veteran in accordance with applicable federal, state and local laws. Saint-Gobain is an equal opportunity employer of individuals with disabilities and supports the hiring of veterans.