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Sr. Intellectual Property Engineer

Komatsu

Komatsu

Peoria, IL, USA
Posted on Jul 27, 2023

Komatsu is an indispensable partner to the construction, mining, forestry, forklift, and industrial machinery markets, maximizing value for customers through innovative solutions. With a diverse line of products supported by our advanced IoT technologies, regional distribution channels, and a global service network, we tap into the power of data and technology to enhance safety and productivity while optimizing performance. Komatsu supports a myriad of markets, including housing, infrastructure, water, pipeline, minerals, automobile, aerospace, electronics and medical, through its many brands and subsidiaries, including TimberPro, Joy, P&H, Montabert, Modular Mining Systems, Hensley Industries, NTC, and Gigaphoton.

Job Overview

In the role, the incumbent will assist Technical Leadership in the development and deployment of an IP Strategy, one that encompasses all Technical Centers across the Komatsu America region.  The senior engineer will organize and execute the invention to patent approval process with inventors and assist senior Management in the filing approval process.  The Senior IP Engineer will review draft patent applications and responses to office actions and provide instructions to outside patent counsel. 

The position holder possess deep technical knowledge and understanding of the relevant product markets and the technologies which will be utilized/ deployed in this evolving environment.  

  • The incumbent will be accountable for executing an IP process from invention to patent approval 
  • Develops IP training and executes to plan for impacted engineering professionals
  • Carries out competitive IP analysis and reporting
  • Develops guidance and procedures on invention, patent search and patent approval 
  • Supports the newly developed IP strategy and changes to Technical Center procedures and processes
  • Provides guidance on the selection of available Patent Law Firms
  • Audits the process to ensure continual improvement

 

Scope

 

  • The incumbent will be accountable for executing an IP process from invention to patent approval 
  • Develops IP training and executes to plan for impacted engineering professionals
  • Carries out competitive IP analysis and reporting
  • Develops guidance and procedures on invention, patent search and patent approval 
  • Supports the newly developed IP strategy and changes to Technical Center procedures and processes
  • Provides guidance on the selection of available Patent Law Firms
  • Audits the process to ensure continual improvement

Key Job Responsibilities

  • Engages with inventors and engineering teams by providing a thorough evaluation of inventions for all possible patent filings/ approvals
  • Organize Patent Approval Committee meetings with Inventor(s) and Sr. Management for filing approval
  • Review draft patent applications and responses to office actions and provide instructions to outside patent counsel
  • Analyzes freedom-to-operate issues with regards to new products
  • Develops knowledge of competitor IP (intellectual property, i.e., patents)
  • Reviews competitor patents and classify them
  • Performs patent searches and investigates competitor technology
  • Analyze and evaluate patents, and advise business and engineering teams with respect to currently patented technologies

Qualifications/Requirements

  • Bachelor’s Degree in Engineering or other relevant science
  • Basic level project management and project execution skills
  • Patent Agent registration a plus, not required
  • Two (2) to – five (5) years of industry related experience, preferably design and development of construction / agricultural or mining equipment
  • Total IP experience of 5-7+ years of experience in patent searching
  • Experience in conducting freedom-to-operate analyses
  • Excellent written and verbal communication skills working with people of varying technical or organizational backgrounds
  • Strong analytical thinking coupled with strong attention to detail
  • Ability to work independently but is a team player
  • Travel up to 20% but with developed technologies (Skype, TEAMs, Zoom) could be negotiable down to <5% 

Additional Information

Komatsu is an Equal Opportunity Workplace and an Affirmative Action Employer. All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability, or protected veteran status.