Patent Counsel

Fluke-Patent Counsel

This Patent Counsel position will support Fluke’s growth and innovation in an industry evolving from traditional hardware products to software, AI-enabled workflow solutions and services. We build extraordinary teams that courageously craft valuable innovative IP. We are looking for a passionate and curious patent attorney to join our Legal IP team. This is the opportunity to join a skilled and collaborative legal team and help us continue building a strong culture of targeted innovation that extends our sustainable competitive advantage. This person will use their patent knowledge and innovation expertise to drive value across a global organization.

Responsibilities: 

• Develop and advance the global patent strategy, with a focus on the assessment of the patent portfolio and alignment with business needs, priorities, and resources to improve and protect value
• Work closely with inventors and engineers to identify, evaluate, and protect patentable and strategic inventions, and provide recommendations on best courses of actions to protect proprietary technology
• Collaborate with inventors and engineers to elicit invention disclosures
• Provide legal advice on patentability of inventions, validity of patents, and patent infringement
• Collaborate with engineers, inventors, product development teams, and other in-house and outside attorneys, to review, draft, and coordinate patent applications, prosecution, and other IP documentation and related agreements
• Provide guidance during the new product design and development process
• Prepare and prosecute U.S. patent applications as needed and work with outside counsel and foreign associates for preparation and prosecution of international patent applications
• Assist with the analysis of Patent Office Actions, gather relevant data and information, and when needed draft responses to the actions to obtain allowance of claims
• Conduct prior art and invalidity searches
• Analyze and monitor patent landscape in support of new market entry, mergers, and acquisitions and advise on FTO and patentability considerations for complex technologies
• Manage the patent docket, complete docket reviews, and provide recommendations on patent maintenance and foreign filing decisions
• Track patent related projects, manage timelines, and keep leadership informed of progress
• Provide recommendations on trade secret protection
• Effectively manage the patent budget
• Participate in due diligence related to patent acquisitions for new businesses or products
• Review and advise on license and other IP agreements
• Continuously improve processes and workflows
• Create and present trainings to different business teams

Qualifications: 

• JD or equivalent from an accredited law school
• Admitted to practice before the USPTO and in at least one state in the United States 
• 5+ years of demonstrated ability, with a preference for candidates with in-house experience
• Knowledge of applicable laws and regulations, including patent, copyright, and trade secret
• Experience and comfort working in a matrixed organization across functions 
• Strong ability to spot legal and business issues and provide solutions or paths to resolution from a legal lens 
• A technically curious, perceptive, proactive, and inquisitive problem-solver
• Strong process acumen and organizational and project management skills including prioritizing multiple concurrent projects and reporting progress and risks
• Ability to own and drive projects to completion
• Understanding business objectives and being able to appropriately assess risk and see opportunities
• Maturity to interact optimally and with confidence across all leadership levels to earn their trust and create demand
• Excellent verbal, written, and presentation skills
• Superior influencing and networking skills
• Service-oriented focus with ability to work as part of cross-functional teams and drive results
• Highest integrity, excellent judgment, and the ability to pro-actively recognize and effectively communicate legal issues to engineers, inventors, and management
• Relationship and trust builder
• Ability to interact with technical and business teams at all levels
• Self-motivated and able to work independently in a fast-paced environment, with the ability to provide prompt, proactive, and practical business and legal recommendations and decisions