Patents and Contracts Manager
SolidEnergy Systems Woburn, MA/ Full Time
SolidEnergy Systems Corp. has an immediate opening position for an Intellectual Property and Contracts Manager. The right person will be passionate about mobile energy storage and has the knowledge and skills to impact our intellectual property strategy. The IP and Contracts Manager is expected to manage the day to day activities around our trade secret database and our filing activities with the USPTO and inform decisions being made within the strategy. The Manager will also serve as lead contact for contracts and agreements with external partners and customers. Ensure SES’ interests are integrated into contractual negotiations.
The position will report to Chief Legal Officer and is based in Woburn, MA. This is not a remote position.
Driving the IP generation process
- Manage the Invention Disclosure process to achieve innovation and cycle time goals
- Conduct directed inventing sessions to solve problems of tomorrow
- Deliver periodic IP training to SES employees
- Mentor inventors on effective invention disclosure writing
- Conduct reference searches
- Support patent counsel during patent application prosecution
Intellectual Asset Portfolio Maintenance
- Develop an IP budget and provide budget forecasts
- Manage portfolio decisions to achieve specific budget targets
- Develop & implement foreign filing strategies that anticipate SES’ business needs
- Conduct periodic prosecution reviews to ensure alignment with SES’ objectives
- Ensure portfolio decisions are properly captured and documented
- Implement and maintain a portfolio management solution
- Maintain SES’ Trade Secret registry and implement measures to ensure policy compliance
- Drafting, Evaluation, Negotiation, and Execution of Contracts, Sub-contracts, Consulting Agreements, Licensing Agreements, Master Agreements, review of customer proposed terms and conditions.
- Serve as the point of contact for customers on contractual matters. Act as contractual “middleman” between our employees and customers, ensuring timely review and approval/reconciliation of variations.
- As needed, guide on contract matters to project managers or other operational staff, including training to new project managers and other employees in contracting practices and procedures.
- Develop and implement procedures for contract management and administration in compliance with company policy.
- Work with Finance to ensure adherence to broader finance and risk requirements such as revenue recognition, pricing and discounting policies, export controls, etc.
- Monitor competitive terms. Monitor customer satisfaction with our terms and conditions and contracting practices. Recommend changes.
- Ensure that signed contracts are communicated to all relevant parties to provide contract visibility and awareness, interpretation to support implementation.
- Handle on-going issue and change management
- Monitor transaction compliance (milestones, deliverables, invoicing, etc.)
- Conduct competitive IP assessments and SWOT analysis
- Support licensing operations as may be needed
The successful candidate will have a solid understanding of intellectual property, patenting strategies, claim charting, licensing processes, and negotiations. Also required is experience in contract drafting, negotiation, and review of commercial agreements and statements of work.
The candidate should have strong interpersonal skills and be able to manage multiple simultaneous tasks. A project management background is desirable. The candidate must be able to work effectively in a highly skilled technical environment, have the ability to influence contributors from all over the organization, and have solid communication, persuasion, and presentation skills. The candidate must have working experience in the management of a moderately sized patent portfolio (~50 families).
- A bachelor’s degree in an engineering discipline or equivalent experience is necessary;
- A Juris Doctor (JD) is required
- A broad background of technical knowledge is desired.
- 2+ years of experience in contract drafting, negotiation, and review.
- Experience working directly with attorneys and/or other third parties in both advisory and negotiation capacities.
- Excellent written communication skills, with clear and concise drafting skills.
- Excellent oral communication and effective negotiation skills.