Nutanix India India
1 week ago
You will work within the Nutanix Legal Department, and in partnership with Nutanixs world-wide Engineering organization, to help build the Companys patent portfolio through effective capture of inventions from R&D activities into the patent program. You will also shepherd review of invention disclosures through the Companys invention disclosure review process. You also will help inside and outside counsel by assessing patentability with respect to invention disclosures, and by supporting investigations of patent validity and infringement of Company and third-party patents. You will bring to the role (1) patent knowledge and experience in invention mining, prior art searching, and research and analysis of patent validity and infringement, and (2) technology knowledge and experience in computer systems, software engineering and software development/release processes, preferably (but not necessarily) in the Companys business areas of software for computing infrastructure and SaaS... products. It is expected that a successful candidate would have had prior patent roles as a patent engineer, patent analyst, or prior art searcher, and prior technical roles or education in software engineering, computer science and/or technical program management at a software company. This position does not involve drafting patent applications or prosecuting patent applications. Responsibilities Coordinate with each product teams patent lead(s) and technical program manager(s) to implement a periodic and systematic review of releases and roadmap to identify and capture candidate inventions into the patent program Manage and shepherd invention disclosures through the internal review processes, from initial creation of an invention disclosure Jira ticket, through Engineering and Legal review of the ticket, to completion of the process via an internal decision to proceed or not proceed with a patent application Advise engineers on creation of a good invention disclosure using an in-house tool based on Jira Conduct novelty searches using patent, non-patent, commercial, and scientific and technical databases Support inside and outside patent counsel on assessment of invention disclosures, including on potential for patenting, risk of copying, and detectability of copying Research and create evidence of use reports/claim charts concerning potential infringements of Company patents Support in-house and outside counsel with investigations into patent validity and infringement of Company and third-party patents Assist in assessment of Company patents for renewals and maintenance fees/annuities Other patent tasks as assigned What you'll bring Degree in Computer Science or Electrical Engineering, or mathematics or a hard science along with significant computer programming coursework. Both patent experience and technology experience gained via 8 years of prior work experience as a patent analyst, patent engineer, or patent prior art searcher, and/or significant technology working experience as a software engineer or programmer, software product manager or patent technical program manager at a software company. A candidate may have more patent experience than technical experience, or more technical experience than patent experience, but must have some knowledge and experience in both areas to be a competitive candidate for this position. Ability to conduct prior art searching on patent databases, such as the USPTO database and Google Patents. Ability to search commercial, scientific and technical publications for targeted content. Experience interviewing inventors/engineers to obtain information for invention disclosures, evidence of use reports, claim charts, and/or patent validity reports. Excellent written and verbal communication skills. Conscientious worker with attention to detail, including ability to arrange and document meetings and track completion of action items (including your own actions items and other peoples action items) raised at meetings. Available and willing to work evenings to support at least twice weekly meetings with persons in USA Pacific time zone, and other Continental USA and Europe time zones. (The manager for this job opening is based in San Jose, CA, and inventors and other persons involved in the patent program who you will be interacting with are predominantly located at Nutanixs engineering centers in USA and India, and to a growing extent in Europe.) Proficient in Microsoft Office software products (Outlook, Excel, Word, PowerPoint) or equivalent commercial software products from Google or Apple. Demonstrated ability to work independently, comfortably, persuasively and efficiently across the Legal and Engineering Departments and with outside attorneys, including successfully initiating, managing, and ensuring completion of projects that require persons (such as engineers and technical program managers) to complete patent-program-related tasks (on top of their usual duties), such as submitting invention disclosures, responding to inquiries, and conducting release reviews. Sense of humour, excellent interpersonal skills, business judgment, strategic thinking, superior work ethic, flexibility, ability to work independently and a passion for cutting-edge technology. Comfortable in addressing new situations and in use of independent judgment. Positive attitude and ability to work in a fast-paced, high-output, team oriented, practical environment. Demonstrates ability to spot issues or gaps and have the enthusiasm for solving such issues or problems and adding value to the Company. Preferences Experience with Jira and Confluence for software development tracking and communication. Knowledge of patent prosecution processes
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