- Draft and prosecute US and international patent and trademark applications to obtain strategic patent and trademark protection.
- Responsible for drafting and negotiating license, joint development, and related agreements.
- Provide freedom-to-operate and non-infringement opinions and guidance, based on legal, business, and technical considerations.
- Partner with the business engineering, sales, product and marketing teams and business managers to develop and implement a strategy to protect and manage the Company’s domestic and international patent portfolio.
- Provide legal & business counsel on IP issues including copyright and trademark, raised in domestic and international transactions.
- Analyze inventions and processes with inventors to maximize scope of patent protection.
- Advise management on other IP rights, designs and trade secrets.
- Conduct IP and contract training for commercial, R&D and engineering teams.
- Draft and counsel Engineering and business teams on IP provisions in various agreements.
- Enforce patent, trademark, and trade secret rights, as well as other IP disputes with third parties.
- Assist business in effectively curtailing counterfeiters.
- Engage and effectively manage outside counsel, when appropriate.
- Set and manage IP budgets for various projects; and
- Work collaboratively with other members of the Legal Department.
Commercial and Other Responsibilities
- Draft, negotiate and review various commercial documents, including customer-facing, as well as supply and sourcing agreements.
- Assist Human Resources with legal support on challenging issues regarding labor, employment, and benefits.
- Manage and oversee outside counsel when litigation arises; and
- Work on other matters outside of core responsibilities, as assigned.
Required Knowledge, Skills and Abilities
- JD from an accredited law school and passed a State Bar exam.
- 7 years of experience as IP counsel in a corporate or law firm environment, preferably both.
- Current knowledge of US Patent laws and regulations.
- Familiarity with international patent laws and regulations.
- Prior experience developing domestic and international IP strategy.
- A proven track record of serving as a trusted IP business advisor, preferably in international settings.
- A strong work ethic and the ability to prioritize and follow through on numerous projects simultaneously.
Desired Knowledge, Skills and Abilities
- Bachelor’s degree in software development/software engineering, computer science or electrical engineering, or experience working in these technical specialties.
- Candidates should already be registered, or be eligible for registration, with the US Patent and Trademark Office.