Intellectual Property Manager

Company DescriptionMonoSol, A Kuraray Company, has been delivering innovative water-soluble technology since 1953, creating safer and more sustainable solutions for diverse industries, including detergents, healthcare, and agriculture. Our cutting-edge advancements tackle global challenges such as packaging waste, driven by a team of chemists, engineers, and innovators. While now operating globally, MonoSol remains deeply connected to its roots in Northwest Indiana, fostering a close-knit and entrepreneurial spirit. We are committed to making a positive impact on the world and empowering our employees to challenge possibilities and drive change. Role DescriptionThis is a full-time, on-site role based in Chicago, IL, for an Intellectual Property Manager. The role involves managing all aspects of intellectual property, including patent preparation, conducting patentability assessments, and ensuring compliance with patent laws. The manager will also collaborate with Research and Development (R&D) teams to identify innovative technologies and implement effective intellectual property strategies. Additionally, the role includes working closely with legal counsel and third-party agents to secure and protect intellectual property rights.Responsibilities  Assist Head of Intellectual Property in developing & executing intellectual property strategy.Manage patent portfolio resulting in broad protection of water-soluble/biodegradable formats/films based on polyvinyl alcohol and other materials.Draft and assist in drafting and prosecuting high-quality patent applications before the US Patent and Trademark Office. Assist in drafting of patents for filing in other outside US jurisdictions and responses to office actions, and collaborate with external counsel on managing prosecutions.Assist the Head of Intellectual Property in designing and managing internal patent databases and patent filing tracking systems.Perform prior art searching, patent landscaping, and draft a comprehensive analysis. Perform technical freedom-to-operate (FTO) analysis of proposed new products and manage third-party FTO inquiries.Manage third-party freedom-to-operate inquiries.Review invention disclosures and determine patent filing priorities with patent counsels.Manage external patent watch activities.Manage the trade secret process.Manage development and execution of the agreement process, as needed.Maintain up-to-date knowledge of changes in patent law and advise clients accordingly.Ensure all patent-related documentation and correspondence are properly maintained and updated.Collaborate with the internal technical team, business team, and external/internal counsels. QualificationsB.S., M.S., or Ph.D. in Chemistry, Chemical Engineering, Polymers/material Science, or related technical field, preferred.Patent agent, registered to practice before the US Patent and Trademark Office, with in-house Corporate IP experience, preferred.5+ years demonstrated R&D and IP portfolio management experience, including 5 years of experience as Patent Agent.Experience working with a cross-functional team to develop an R&D or IP strategy that supports a broader business strategy.Experience managing and working with external counsel on the preparation and prosecution of patent applications, both in the U.S. and abroad.Demonstrated technical writing skills and proven experience in drafting patents and claims.Proficiency in using patent databases and other related software.Excellent proficiency in computer skills, including familiarity with AI toolsStrong analytical and problem-solving skills.A team player with strong verbal and written communication skills.Independent and energetic personality with the ability to multitask.Ability to travel both domestically and internationally.Ability to operate in the technical, management, and commercial arenas, and thrive in a fast-paced, open-thinking, corporate environment.