Lead Patent Counsel (relocation to New Zealand)

4 Weeks ago • 6-10 Years • Account Management • Legal

Job Summary

Job Description

ZURU seeks a Lead Patent Counsel to build and lead a new IP team, focusing on their panelized housing project. Responsibilities include developing and executing patent strategies, drafting and prosecuting patent applications, conducting freedom-to-operate analyses, managing the patent portfolio, performing IP research and analysis, collaborating with cross-functional teams, monitoring competitor activity, and supporting patent litigation. The ideal candidate will have a strong background in mechanical or construction engineering, a J.D. degree, significant experience in patent prosecution and portfolio management, and experience managing a team of patent attorneys. International experience and familiarity with various jurisdictions' patent laws are essential.
Must have:
  • Bachelor's degree in Mechanical Engineering or related field
  • Juris Doctor (J.D.) degree
  • 6-10 years' experience in patent prosecution and portfolio management
  • Experience managing a team of patent attorneys
  • Strong knowledge of patent law
  • Experience with USPTO, IPONZ, or EPO
Good to have:
  • Experience in trademark, copyright, registered designs, litigation support, and IP contracts
  • Worldwide patent protection experience
Perks:
  • Culture for Growth
  • Global Opportunities
  • A-Player Team
  • Competitive Remuneration

Job Details

Join us as Lead Patent Counsel and make a difference at the forefront of the disruptive business of ZURU working closely with inventors, engineers, and cross-functional teams to identify and protect our valuable intellectual property assets!

ZURU is on a mission to disrupt across industries, challenge the status quo and catalyst change through radical innovation and automation advances.  This is in play in different pillars of the company: ZURU Toys are re-imagining what it means to play; ZURU Tech is shaping a better future by leading the next building revolution; ZURU Edge is pioneering new generation FMCG brands to better serve modern consumers.  
  
Founded in 2003 by EY Entrepreneur of the Year and World Entrepreneur Hall of Fame brothers Nick and Mat Mowbray, ZURU has quickly grown to a team of over 5000 direct and indirect members across more than 30 international locations. 
  
One of the largest toy companies in the world, globally recognised and award-winning brands include Bunch O Balloons, Mini Brands, XSHOT, Rainbocorns and Smashers. Our global FMCG brands include MONDAY Haircare, Rascal + Friends, NOOD, BONKERS, Gumi Yum Surprise and Dose & Co. 

THE OPPORTUNITY:
ZURU is a dynamic and rapidly growing company at the forefront of innovation in the product development industry. We are seeking a highly experienced and motivated Lead Patent Counsel, with specialization in construction or mechanical engineering to join our team.

This is an exciting opportunity to create a new team within ZURU. This role would primarily be working with the ZURU tech team on the Panelized housing project. In this role, you'll be part of our passionate and innovative team, where your expertise in construction or mechanical engineering and patent law, will play a pivotal role in protecting our valuable intellectual property and driving the success of our cutting-edge products. 

WHAT YOU'LL DO:

    • Patent Strategy: Develop and execute a comprehensive patent strategy aligned with ZURU's business goals and objectives in the construction and mechanical engineering domains
    • Patent Drafting and Prosecution: Prepare, draft, and file high-quality patent applications to secure intellectual property rights for ZURU's inventions. Manage the prosecution process, responding to office actions and working closely with the patent examiners to ensure successful outcomes
    • Freedom-to-Operate Opinions: Conduct and analyze patent searches to provide freedom-to-operate opinions.
    • Work with the NZ office lead to build a team of 1-3 attorneys to support you in your work then manage their output and check their work
    • Patent Portfolio Management: Strategically manage and maintain ZURU's patent portfolio, conducting regular patent reviews, identifying opportunities for expansion, and making recommendations to enhance IP protection.
    • Intellectual Property Research and Analysis: Conduct in-depth patent searches and analysis to assess the patentability of ZURU's products and technologies. Provide guidance and recommendations to product development teams based on the results.
    • Collaboration and Team Building: Collaborate effectively with cross-functional teams, including R&D, product development, marketing, and legal, to identify inventions, evaluate patentability, and ensure seamless integration of IP strategies within product development processes
    • Competitive Intelligence: Monitor and analyze competitor activities, identifying potential infringement risks and taking proactive measures to protect ZURU's intellectual property rights
    • Patent Litigation Support: Collaborate with external legal counsel when necessary to provide technical support and guidance in patent litigation matters
    • Stay Updated: Keep abreast of industry trends, changes in patent laws, and emerging technologies in the construction and mechanical engineering domains. Provide internal training and education on patent-related matters to relevant teams within ZURU

WHAT YOU'LL BRING:

    • You must have a Bachelor’s degree or higher in mechanical engineering, mechatronics, or a related discipline
    • You must have Juris Doctor (J.D.) degree or equivalent from an accredited law school and admission to at least one bar
    • Experience of around 6 -10 years in patent prosecution and portfolio management, with a focus on construction or mechanical engineering. Strong knowledge of patent law (including prosecution procedures and providing freedom-to-operate opinions) is required. Experience in a law firm or corporate patent department is preferred. Ideal candidate will also have experience in trademark, copyright, registered designs, litigation support, and IP clauses in contracts.
    • Management Experience: Needs experience with running small teams of people in the patent attorney field.
    • World wide experience: Needs experience in patent protection options for the world and have contacts they can work with in various jurisdictions around the world.
    • Technical Expertise: In-depth knowledge and understanding of construction and mechanical engineering principles and practices. Ability to analyse and interpret technical documents, engineering drawings, and specifications.
    • You are registered to practice before the USPTO, IPONZ, or EPO.
    • Proven track record of successfully prosecuting patents before the USPTO, IPONZ, or EPO
    • Strong Legal Skills: Solid understanding of patent laws and regulations, including patentability requirements, prior art searches, and patent drafting and prosecution procedures.
    • Strategic Thinker: Proven ability to develop and execute effective patent strategies aligned with business objectives.
    • Team Player: Excellent collaboration and interpersonal skills, with the ability to work effectively within cross-functional teams and build relationships with stakeholders at all levels of the organization.
    • Communication Skills: Excellent written and verbal communication skills. Ability to effectively communicate complex technical and legal concepts to both technical and non-technical stakeholders.
    • Adaptability: Demonstrated ability to thrive in a fast-paced, dynamic environment and handle multiple projects with competing priorities.
    • You are excited to contribute to our office culture, this role is based in Auckland, New Zealand!
    • This role is also open to relocation for US/EU/UK Patent Lawyers
LIFE@ZURU
At ZURU, we have cultivated a high-performing culture that encourages excellence. Our team works towards ambitious goals, learning, performing, and improving together, all while having fun. We empower talented individuals to do their best work every day.

At ZURU, you get out what you put in. You are responsible for driving your own career and we provide the platform to achieve it. As ZURU is on such a fast growth trajectory, there are opportunities here that you won’t find anywhere else.

We recognise that ZURU’s success stems from our people and you can only be at your best when you are looking after yourself. ZURU encourages all our team members to invest in their wellbeing by providing an array of benefits and tools.

Apply now and be a key contributor to our exciting journey of creativity and invention.

WHAT WE OFFER
🌱 Culture for Growth
🌎 Global Opportunities
💡 Be surrounded by an A Player Team
💰 Competitive Remuneration

ZURU – Tomorrow Reimagined
🚀ZURU.com |
#LI-JK1  

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