Director, Intellectual Property

Position Summary:

The Director – Intellectual Property, as a key member of Gleason’s Legal Department and reporting to the Vice President, General Counsel & Secretary, will oversee the intellectual property (IP) functions of the Company.

Job Responsibilities:

Lead Intellectual Property Function:

• Support the development and implementation of Gleason’s IP strategy in alignment with business objectives.
• Manage the Company’s intellectual property portfolio, including patents, trademarks, copyrights, domain names, and trade secrets. 
• Maintain Gleason’s Patent & Trademark List, detailing the current status of all Company patents and trademarks; track all relevant dates and deadlines for Gleason’s IP assets.
• Work with internal resources and external counsel to acquire and enforce the Company’s IP rights and defend against any claims of infringement.
• Proactively harvest inventions to ensure early protection of all important technology developments.
• In coordination with the business and leadership teams, determine whether and what to file, including the assessment of the viability of protecting inventions as trade secrets.
• Prepare, draft, and file U.S. patent applications for inventions originating from the Company’s U.S. entities. 
• Arrange for the timely filing of all International (PCT) and non-U.S. patent applications, including the instruction of foreign counsel and coordination of relevant translations; prepare necessary U.S. Receiving Office documentation for PCT applications filed via the U.S. Patent and Trademark Office (USPTO).
• Respond to Official Actions from the USPTO for all entities; prepare arguments/amendments as appropriate.
• Prepare patent assignments for all U.S. patent applications, obtain inventor signatures, and file for recordation in the USPTO; manage the Company’s deposit account with the USPTO. 
• Review and approve responses prepared by foreign counsel for all foreign-filed patent applications; provide additional remarks/arguments/documents and suggest changes where necessary. 
• Seek appropriate technical assistance from Company experts in the preparation of applications and responses.
• Prepare annual IP budgets for each Company entity that owns patents/applications; review and approve all IP-related invoices, including allocation of expenses to the appropriate legal entities; track IP expenses for all Gleason entities.
• Manage the Company’s patent annuity payments via coordination of quarterly review meetings of the Company’s Intellectual Property Review Board; report annuity decisions, new applications, and new grants to the Company’s annuity payment service.
• Regularly monitor the publication of gear-related technology patents and applications, as well as other relevant publications; analyze and disseminate findings to business teams.
• Provide support as needed on contract matters, including patent and trademark licensing agreements, joint development agreements, delimitation agreements, and other types of agreements.
• Review brochures and other marketing materials from an IP standpoint. 
• Provide targeted trainings on IP-related matters to the business teams globally.
• Respond to ad hoc questions from stakeholders and support other key initiatives (Gleason’s annual Innovation Award, inventor recognition plaques, etc.).

Qualifications (Knowledge, Skills & Abilities):

• Strong organizational, time management, and communication skills – ability to multi-task.
• Must be a self-starter, highly motivated, possess a strong work ethic, and demonstrate an ability to operate proactively and independently.
• Ability to take a practical and creative approach to solving complex business problems in the field of IP.
• Ability to act quickly when required by time-sensitive business needs and reprioritize/pivot as requirements evolve.
• Ability to analyze data, draw conclusions, and present findings in verbal, written, and presentation form.
• Ability to work collaboratively within a team environment and interact effectively with individuals cross-functionally and at all levels of the organization.
• Ability to think strategically about the Company’s overall approach to protecting and enforcing IP rights.

Preferred Education/Training/Experience:

• Patent attorney or patent agent registered to practice before the USPTO.
• Familiarity with International (PCT) practice.
• Familiarity with trademark practice (U.S. and foreign).
• Familiarity with key IP-related clauses in commercial contracts (e.g., IP ownership & indemnities).
• Interest in learning about new technologies; engineering background preferred (mechanical is a plus).   
• Experience working in the manufacturing industry, particularly gear manufacturing, is a plus.
• German language proficiency is a plus, but not required.

Computer Skills:

• High degree of proficiency with Microsoft Office (Teams, Word, Excel, PowerPoint, and Outlook).
• Familiarity with IP portfolio management solutions is a plus.

Travel Requirements:

Occasional travel (day and overnight) may be required.

The salary range in this posting depends on qualifications and experience. Actual compensation may vary, and this job posting is not necessarily reflective of actual compensation that may be earned, nor a promise of any specific pay for any specific employee, which is always dependent on relevant experience, qualifications/education, and other factors including work schedule, shift premiums, and overtime.

Gleason is an Equal Opportunity Employer and considers applicants for all positions without regard to age, disability, genetic information and/or predisposing genetic characteristics, marital status, national origin, race/color, religion, sex/gender, sexual orientation, military or veteran status, victim of domestic violence status, arrest or conviction record, or any other characteristic protected by applicable laws.

OFFICE ENVIRONMENT

PHYSICAL DEMANDS

The physical demands described here are representative of those that would need to be met by an employee to successfully perform the essential functions of this job in an office environment. While performing the duties of this job, the employee is occasionally required to stand; walk; sit; use hands to finger, handle, or feel; and talk or hear. The employee may occasionally lift and/or move up to 25 pounds. Specific vision abilities required by this job may include close vision, distance vision, color vision, peripheral vision, depth perception, and ability to adjust focus.

WORK ENVIRONMENT

The work environment characteristics described here are representative of those an employee may encounter while performing the essential functions of this job in an office environment. While performing the duties of this job, the employee is occasionally exposed to moving mechanical parts. The noise level in the work environment is usually moderate.

REASONABLE ACCOMMODATIONS

To perform this job successfully, an individual must be able to perform each essential duty satisfactorily. The requirements listed above are representative of the knowledge, skill, experience and/or ability required. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.

This job description in no way states or implies that these are the only duties to be performed. Employees are required to follow any other instructions and to perform any other duties requested by their manager or supervisor.

DISCLAIMER

The duties listed in this job description are intended only as illustrations of the various types of work that may be performed and is not an all inclusive summary of job duties and responsibilities. The omission of specific statements or duties and responsibilities does not exclude them from the position if the work is similar, related or a logical assignment to the position. This job description does not constitute an employment agreement between the employer and employee and is subject to change by the Company as the needs of the Company and requirements of the job change.