Director, Intellectual Property

Position Summary:

The Director – Intellectual Property, as a key member of Gleason’s Legal Department and reporting to the Vice President, General Counsel & Secretary, will oversee the intellectual property (IP) functions of the Company.

Job Responsibilities:

Lead Intellectual Property Function:

• Support the development and implementation of Gleason’s IP strategy in alignment with business objectives.
• Manage the Company’s intellectual property portfolio, including patents, trademarks, copyrights, domain names, and trade secrets. 
• Maintain Gleason’s Patent & Trademark List, detailing the current status of all Company patents and trademarks; track all relevant dates and deadlines for Gleason’s IP assets.
• Work with internal resources and external counsel to acquire and enforce the Company’s IP rights and defend against any claims of infringement.
• Proactively harvest inventions to ensure early protection of all important technology developments.
• In coordination with the business and leadership teams, determine whether and what to file, including the assessment of the viability of protecting inventions as trade secrets.
• Prepare, draft, and file U.S. patent applications for inventions originating from the Company’s U.S. entities. 
• Arrange for the timely filing of all International (PCT) and non-U.S. patent applications, including the instruction of foreign counsel and coordination of relevant translations; prepare necessary U.S. Receiving Office documentation for PCT applications filed via the U.S. Patent and Trademark Office (USPTO).
• Respond to Official Actions from the USPTO for all entities; prepare arguments/amendments as appropriate.
• Prepare patent assignments for all U.S. patent applications, obtain inventor signatures, and file for recordation in the USPTO; manage the Company’s deposit account with the USPTO. 
• Review and approve responses prepared by foreign counsel for all foreign-filed patent applications; provide additional remarks/arguments/documents and suggest changes where necessary. 
• Seek appropriate technical assistance from Company experts in the preparation of applications and responses.
• Prepare annual IP budgets for each Company entity that owns patents/applications; review and approve all IP-related invoices, including allocation of expenses to the appropriate legal entities; track IP expenses for all Gleason entities.
• Manage the Company’s patent annuity payments via coordination of quarterly review meetings of the Company’s Intellectual Property Review Board; report annuity decisions, new applications, and new grants to the Company’s annuity payment service.
• Regularly monitor the publication of gear-related technology patents and applications, as well as other relevant publications; analyze and disseminate findings to business teams.
• Provide support as needed on contract matters, including patent and trademark licensing agreements, joint development agreements, delimitation agreements, and other types of agreements.
• Review brochures and other marketing materials from an IP standpoint. 
• Provide targeted trainings on IP-related matters to the business teams globally.
• Respond to ad hoc questions from stakeholders and support other key initiatives (Gleason’s annual Innovation Award, inventor recognition plaques, etc.).

Qualifications (Knowledge, Skills & Abilities):

• Strong organizational, time management, and communication skills – ability to multi-task.
• Must be a self-starter, highly motivated, possess a strong work ethic, and demonstrate an ability to operate proactively and independently.
• Ability to take a practical and creative approach to solving complex business problems in the field of IP.
• Ability to act quickly when required by time-sensitive business needs and reprioritize/pivot as requirements evolve.
• Ability to analyze data, draw conclusions, and present findings in verbal, written, and presentation form.
• Ability to work collaboratively within a team environment and interact effectively with individuals cross-functionally and at all levels of the organization.
• Ability to think strategically about the Company’s overall approach to protecting and enforcing IP rights.

Preferred Education/Training/Experience:

• Patent attorney or patent agent registered to practice before the USPTO.
• Familiarity with International (PCT) practice.
• Familiarity with trademark practice (U.S. and foreign).
• Familiarity with key IP-related clauses in commercial contracts (e.g., IP ownership & indemnities).
• Interest in learning about new technologies; engineering background preferred (mechanical is a plus).   
• Experience working in the manufacturing industry, particularly gear manufacturing, is a plus.
• German language proficiency is a plus, but not required.

Computer Skills:

• High degree of proficiency with Microsoft Office (Teams, Word, Excel, PowerPoint, and Outlook).
• Familiarity with IP portfolio management solutions is a plus.

Travel Requirements:

Occasional travel (day and overnight) may be required.