Patent Counsel

The Company
NEXTCHEM is the Maire company’s business unit dedicated to Sustainable Technology Solutions. Thanks to the extensive know-how of nitrogen, hydrogen, carbon capture, fuels, chemicals, and polymers, we offer innovative solutions and processes to fully enable the energy transition. At NEXTCHEM, our main goal is to enable a low-emission future through our technological portfolio. We leverage our expertise to serve the decarbonization of industries, from transportation to agriculture, from energy to materials.

Technology is powerful, we use it to make the difference. Every day, we put our skills to work in new ways to pursue our shared purpose and make a real and positive difference.
Our goal is to build a sustainable future and leave a positive impact on the planet. To achieve this, we seek individuals with ambitions equal to ours, individuals who are committed to transforming our shared vision into reality. Join us to make an impact.

The Challenge
Maire Group is currently expanding its IP capabilities with resources dedicated to all companies in the NEXTCHEM business unit that will be responsible for protecting NEXTCHEM’s innovations, by creating registered IP such as patents.
The IP team of NEXTCHEM will operate in close cooperation with the IP Department already available in Stamicarbon, a Dutch based company and the licensor of all nitrogen related fertilizer technologies in NEXTCHEM, and established within the Innovation Center of the Stamicarbon organization.

The new resources will be based in Italy.

We are looking for a  Patent Counsel.

You are part of the internal  IP team of NEXTCHEM  as well as closely cooperating with the IP department in Stamicarbon and responsible for interacting with internal and external clients to answer all their IP questions. Your main tasks will be the harvesting and protection of new inventions as well as, in cooperation with outside counsel, ensuring the drafting, filing and prosecution up to the grant of a patent.

You will also contribute to formulating the IP strategy and in particular the patent strategy for new innovation projects and provide freedom to operate opinions on new technologies before introduction to the market.
In the course of the above you will also occasionally be carrying out various Intellectual Property searches such as novelty, Freedom of Operation, invalidity, and opposition searches using various specialized patent and non-patent databases.

Responsibilities :
Advise colleagues regarding patent or general IP legal issues;
Create awareness of the importance of IP in the organization;
Invention harvesting (interaction with inventors):
Assist Research & Technology colleagues in identifying potentially patentable inventions;
Make in depth study of the technology in order to understand the invention;
Patentability Search:
Define scope of search based on preliminary definition of invention in communication with inventors.
Prepare draft claims and outline of the invention for outside counsel based on definition of invention in light of the prior art;
Assist inventors (and Innovation Departments) with every aspect of the patent process. Support inventors to prepare invention disclosures. Learn about the invention, then research other similar inventions and discuss the concept with other inventors to determine if there is any similarity to another invention that might prevent a patent from being issued;
Interact with inventor/outside counsel to review & finalize draft patent application;
During prosecution of patent application interact with inventors, business and outside counsel to ensure best available protection;
Coordinate and assist outside counsel in Oppositions and Litigation
Support Freedom to Operate searches and give Freedom to Operate opinions as well as provide guidance to internal clients regarding Freedom to Operate.

The Candidate
You are a qualified European or US Patent attorney;
You have a Technical Master Degree in science or engineering (Chemical Engineering preferred);
You are Pro-active and team oriented;
You have a thorough technical background combined with strong analytical skills and a well-developed sense for details and…