Corning is the world leader in specialty glass and ceramics, creating and manufacturing keystone components that enable high-technology systems.
Corning’s history is filled with breakthrough technologies that have played an important role in the way the world works. We thrive on solving difficult, commercially relevant problems through an innovative and collaborative research and development process. Corning succeeds through sustained investment in R&D, more than 160 years of materials science and process engineering knowledge, and a distinctive collaborative culture.
Purpose of Position:
Meet business and corporate IP needs by providing a full range of IP services and counseling to assigned business clients, and building and maintaining a portfolio of patents and other IP that advance the technical and commercial interests of the company.
Key Accountabilities Include:
Preparation, prosecution, and maintenance of Corning’s patents.
Manages and reviews patent application cases by outside counsel, including quality and cost control and adherence to timing requirements.
Develops and maintains extensive knowledge of relevant IP in particular technical areas of responsibility and proactively uses that knowledge to provide optimal IP value-added services.
Supports litigation efforts as appropriate.
Works with support staff and other attorneys within the Department to foster a positive and productive environment with open communication.
Performs substantive transactional work, including negotiation and drafting of agreements related to IP transactions (e.g. licenses, joint-development agreements, etc.).
Participation in and/or leadership of improvement projects and Department initiatives.
Ensures assigned businesses or program managers are well informed about risks relative to third-party patents by conducting IP risk assessments.
Provides ongoing counseling to assigned clients with respect to IP matters and works with Division Patent Counsel to ensure optimal implementation of the IP Strategy Plan for the business.
Key Responsibilities Include:
Reviews invention disclosures as assigned and prepares patent applications to be filed with the relevant patent offices using high standards of legal and technical excellence to optimally cover the Corning innovation.
As authorized by supervisor, provides legal opinions as to patent scope and coverage issues (patentability opinions, risk assessments, infringement, validity, etc.).
Monitors the competitive IP space and works with competitive intelligence groups for the relevant business(es) to identify potential infringing products.
Reviews identified competitive patents of interest and competitor products and conducts clearance of any potential conflicts identified.
Provides client counseling on a variety of IP related subjects: analysis of competitor’s IP, what information can be disclosed at a trade show, what can be published, etc.
Provides recommendations to decide foreign filing/exam request/national phase entry in accordance with the business unit Technology and IP Strategy Plans.
Provides ad-hoc support to staff members on issues where expertise is relevant and maintains open communication with other attorneys in the Department.
Carries out transactional activities as assigned including drafting and supervised negotiation of joint development agreements, sponsored research agreements, license agreements, valuation agreements, and/or IP related supply agreements.
Provides counseling in the invention submission process and training to ensure that invention disclosures are complete and include general knowledge of prior art.
Manages global patent prosecution and the quality of the prosecution of assigned cases in accordance with the relevant IP Strategy Plan of the business.
Implements foreign filing decisions and strategy; supports foreign oppositions as assigned, patent drafting, patent prosecution in order to protect Corning’s patents.
Manages external counsel engagement process for patent preparation and prosecution including negotiation of cost arrangements and holds outside counsel accountable to the defined process, cost, and quality requirements.
Implements strategies in accordance with country specific laws and issues.
Ensures the integrity and accuracy of patent portfolio data in the IP docket system and of the files in patent portfolio. Ensures an accurate inventory of the existing patents and works with commercial representatives to ensure and implement an appropriate patent marking strategy.
Provides training sessions and seminars on relevant IP topics, conducts mentoring of junior attorneys and other professionals, and tracks progress with respect to skill gap closure and direct report (if any) development plans.
Job Title: Intellectual Property Attorney
Reference Number: 176617
Critical Knowledge, Skills, and Behaviors:
Interest in learning and ability to learn new technologies quickly.
Very good communication skills, written and oral, to ensure message clarity and appropriateness for the particular audience.
Appropriate background experience and technical knowledge and the ability to quickly grasp new technologies.
Member of state Bar and member of patent Bar and willingness to become a member of the NY bar.
BS and/or advanced degree in technology (Material Science, Chemical Engineering, Chemistry, Mechanical Engineering, or Physics preferred, but other technical backgrounds and experience that correspond well with our technologies will be considered).
Ability to identify and manage risks and recommend appropriate solutions consistent with the relevant risk tolerances of assigned business and the Company.
Ability to reduce complexity to an actionable set of facts and decision points.
Some exposure or experience with drafting IP agreements and negotiation of IP transactions.
Ability to work independently.
Ability to manage multiple simultaneous projects effectively.
Comfortable in interacting with inventors, managers, and senior leadership, and good common sense and application of same/judgment.
Ability to properly and thoroughly prepare and prosecute patent applications with appropriate attention to detail, timeliness, and strategic breadth of coverage.
Critical Work Experiences (Required):
3-to-4 years experience as a patent attorney (law firm preferred), with significant experience and capabilities in patent preparation and prosecution, including familiarity with foreign patent practice.
Exposure to a strong mentor with the ability to teach and coach good legal practice and intellectual rigor in writing and prosecuting patent applications.
Critical Work Experiences (Desired):
Prior technical experience; e.g., engineering or other technical role in industry.
Opinion writing, including infringement, validity, freedom to practice and enforceability opinions.