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Patent Agent

Apply Job ID REF6174G Date posted 04/19/2022 Address 155 Harlem Avenue, Glenview, IL Job Type Full-time Job Status Exempt

Since its founding more than 100 years ago, ITW has become one of the world’s leading diversified manufacturers of specialized industrial equipment, consumables, and related service businesses. We place a high premium on the development of innovative solutions–most of which are developed in tandem with our customers. And we continue to ensure that our customers receive timely, cost-effective service for the innovative products we provide.

ITW’s differentiated business model is composed of a set of unique core capabilities: our proprietary 80/20 business process, customer-back innovation, and our well-known decentralized entrepreneurial culture. These capabilities are unmistakably ITW—and key to our longevity and strong performance.

ITW’s products and solutions are at work all over the world, in deep-sea oil rigs, aerospace technology, bridges and wind turbines, healthcare, the spaces in which we live and work, the cars we drive, and the mobile devices we rely on. We are never, whether we know it or not, more than a few steps from an innovative ITW solution.

Today, ITW (NYSE: ITW) is a Fortune 200 company that employs nearly 43,000 people with operations in 55 countries with headquarters in Glenview, IL. Our campus includes a fitness center at no cost to the employees, cafeteria, outdoor volleyball courts, walking trails around the facility, employee resource groups, corporate discounts, dry cleaning services, covered/outdoor parking, and much more.  We are just a block away from the nearest Metra station, and it is a quick 20-minute train ride to downtown Chicago, museums, lakefront, and other activities.

More details on our benefits can be found on our website at https://www.itw.com/careers/benefits-compensation/


Reporting to a Group Technology Counsel, the Patent Agent will have responsibility for assisting IP attorneys in engaging closely with ITW businesses to develop IP protection strategies, manage IP capture and patent prosecution, form patentability opinions, and evaluate ITW and competitor patent portfolios.

Specific responsibilities of the Patent Agent will include, but are not limited to:

  • Work closely with US- and foreign-based ITW Group Technology Counsel and Assistant Group Technology Counsel to develop and maintain worldwide patent portfolios for a number of ITW businesses.
  • Become a close business partner to assigned ITW businesses and learn their businesses, products, and markets.
  • Meet and confer with counsel and business personnel to develop and execute IP protection strategies.
  • Partner closely with the engineering and product teams to identify and capture new inventions and inform as to competitor IP landscape.
  • Conduct meetings with business units to discuss innovation pipelines and specific innovation projects.
  • Support the management of diverse, worldwide IP portfolios based on strategies developed with the assigned businesses, including overseeing outside counsels’ prosecution of patent applications.
  • Quickly become familiar with the patent portfolios to counsel the businesses and make decisions on securing worldwide protection and annual renewals and enforcement.
  • Manage prosecution matters by reviewing patent applications, responses to Office Actions, and other documents prepared by outside counsel for filing with US and foreign patent offices.
  • Provide support for docketing matters and other IP functions.
  • Conduct patentability searches and studies.
  • Coordinate and review IP landscape and other searches.
  • Stay current with patent law changes and develop/implement approaches in response.
  • Prepare concise and understandable written and oral summaries and recommendations for IP strategy for the business and legal staff.
  • Support IP-related due diligence in commercial transactions, such as acquisitions, divestitures, and licensing.
  • Conduct training for business teams on IP-related topics.
  • Subject to COVID-19 pandemic travel restrictions, travel to various ITW businesses in the U.S.  to partner with their Innovation, R&D and Management teams and establish / support their IP strategies.
  • At least 7 years experience, as a patent agent, at a law firm or corporation.
  • B.S. in Mechanical Engineering, Electrical Engineering, Computer Engineering, Computer Science, or other engineering disciplines.
  • Registration to practice with the USPTO.
  • Knowledge of U.S. and foreign patent policies and procedures for a worldwide patent portfolio and experience advising on patent-related issues.
  • Ability to provide strategic thought leadership; build strong relationships with superiors and peers and collaborate across the organization.

DESIRED EXPERIENCE AND TRAITS:

  • U.S. and foreign patent prosecution experience.
  • Proficient with conducting legal and factual research
  • Acting as direct contact for and interacting with business clients, outside counsel, and international colleagues and counsel

COMPETENCIES:

  • Excellent written and verbal communication and presentation skills.
  • Solid organizational skills and ability to build consensus with colleagues.
  • Strong interpersonal skills and ability to work well in a fast-paced, dynamic environment with in-house and outside attorneys and with the Company’s technical and business personnel. 
  • Demonstrated success managing complex and competing organizational priorities in a fast-paced environment.
  • Strong leader and collaborator with a focus on organizational and team success.
  • Courageous; takes risks in ideas and actions to progress the organization.
  • Solution-oriented; proven focus on operational excellence and innovation.
  • Pragmatic; doesn’t overcomplicate but provides practical solutions and implementation strategies.
  • Comfortable challenging the status quo.
  • In addition to possessing the requisite agent and technical skills, the successful candidate must approach this role from a business perspective and demonstrate a high degree of ethics and integrity, as well as strategic/conceptual thinking capabilities.

 

             

Illinois Tool Works Inc. (“ITW” or “the Company”) is an equal employment opportunity employer. All qualified applicants will receive consideration for employment without regard to race, color, sex, gender identity, sexual orientation, religion, national origin, age, disability, protected Veteran status or any other characteristic protected by applicable federal, state, or local laws.

If you are a qualified individual with a disability and are unable or limited in your ability to use or access the online application system process due to your disability, please email corp_accessibility@itw.com to request assistance. No other requests will be acknowledged.

ITW is an equal opportunity employer. We value our colleagues’ unique perspectives, experiences and ideas and create workplaces where everyone can develop their careers and perform to their full potential. 

As an equal employment opportunity employer, ITW is committed to equal employment opportunity and fair treatment for employees, beginning with the hiring process and continuing through all aspects of the employment relationship. 

All qualified applicants will receive consideration for employment without regard to race, color, sex, gender identity, sexual orientation, religion, national origin, age, disability, protected Veteran status or any other characteristic protected by applicable federal, state, or local laws.  

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At ITW, we value our colleagues' unique perspectives, experiences, and ideas and create workplaces where everyone can develop their careers and perform to their full potential.

Equal Opportunities

ITW is committed to equal employment opportunity and fair treatment for employees, beginning with the hiring process and continuing through all aspects of the employment relationship.

All qualified applicants will receive consideration for employment without regard to race, color, sex, gender identity, sexual orientation, religion, national origin, age, disability, protected Veteran status, or any other characteristic protected by applicable federal, state, or local laws. Read more information here.

If you are a qualified individual with a disability and are unable or limited in your ability to use or access this online application system process due to your disability, please email corp_accessibility@itw.com to request assistance. No other requests will be acknowledged.