Director and Sr. Counsel (Patents and IP Transactions)

About the role

As a member of the Patent Development Team (within the Global Technology & Commercial Legal Services Team), this individual will serve as a client focused business partner to support IP transactions, develop WD's portfolio of patents and trade secrets in alignment with business objectives, and provide solution oriented intellectual property advice and support to the client. This full-time position is based in WD's office in Irvine, California (will also consider San Jose, California, and Rochester, Minnesota) and will report to the Director, Associate General Counsel, Patents.

Responsibilities

• Review, draft and negotiate IP related agreements or other agreements with IP provisions, including technology and IP licenses, joint development agreements, supply chain related agreements, evaluation and partnership agreements.
• Support the IP and technology aspects of M&A and joint venture transactions including due diligence and agreement drafting and review.
• Develop and manage parts of a global patent and trade secret portfolio to protect company technologies and processes, including managing outside counsel on patent drafting and prosecution per quality and budget objectives.
• Manage/conduct invention review, patentability searches and associated invention review board meetings and processes.
• Assess patent landscapes responsive to client needs and review competitive industry information to identify high valued patents in the company portfolio.
• Protectively engage with client organizations to understand the latest developments, competitive challenges and technical roadmaps.
• Harvest new inventions and align patent development and freedom to operate strategies with evolving business needs.
• Provide intellectual training to client organizations and advice in response to client requests.
• Partner with the Compliance function to ensure proper handling of company and third party confidential information, including reviewing technical publication materials for confidentiality screening.
• Assist the litigation team on matters related to patent litigation defense or enforcement; assist other teams within the Legal organization on matters involving patents or other IP issues.

Required qualifications

• 8-10+ years of relevant patent experience in a law firm and/or in-house legal department.
• Prior experience in IP transactions work with experience in a variety of agreements, and in global patent portfolio development and management.
• Strong written and verbal communication skills and requisite technical and business acumen to effectively communicate legal advice within the appropriate technical and business contexts.
• A customer centric mindset and ability to work well cross-functionally with other members of the Legal organization and client organizations to support client objectives.
• Ability to take ownership of tasks and deliver results with attention to detail, and contribute to the overall success of the Patent Development team and the greater Legal organization.
• Have an innovation and agile mindset to focus on continuous improvement, in both growth of personal skills and improving aspects of the overall team.
• Bachelor's degree in Physics, Materials Science, Electrical Engineering or a related field.
• Bar admission in California and patent attorney registration at the USPTO.

Preferred qualifications

• Expertise in areas related to semiconductor-based designs and processes, optics, magnetics or materials sciences, either through prior technical experiences or relevant advanced degree.
• In-house patent or intellectual property counsel experience.
• Prior experience with intellectual property licensing and litigation matters.

Pay & benefits

An employee's pay position within the salary range may be based on several factors including but not limited to relevant education, qualifications, certifications, experience, skills, ability, knowledge of the job, performance, contribution and results, geographic location, shift, internal and external equity, and business and organizational needs. The salary range is what we believe to be the range of possible compensation for this role at the time of this posting. We may ultimately pay more or less than the posted range and this range is only applicable for jobs to be performed in California, Colorado, New York or remote jobs that can be performed in California, Colorado and New York.

You may be eligible for overtime pay pursuant to company policy and applicable laws, and may also be eligible for shift differential pay, depending on the shift to which you are assigned. You will be eligible to be considered for bonuses under either WD's Short Term Incentive Plan ("STI Plan") or the Sales Incentive Plan ("SIP") which provides incentive awards based on Company and individual performance, depending on your role and your performance. You may be eligible to participate in our annual Long-Term Incentive (LTI) program, which consists of restricted stock units (RSUs) or cash equivalents, pursuant to the terms of the LTI plan. Please note that not all roles are eligible to participate in the LTI program, and not all roles are eligible for equity under the LTI plan. RSU awards are also available to eligible new hires, subject to WD's Standard Terms and Conditions for Restricted Stock Unit Awards.

We offer a comprehensive package of benefits including paid vacation time; paid sick leave; medical/dental/vision insurance; life, accident and disability insurance; tax-advantaged flexible spending and health savings accounts; employee assistance program; other voluntary benefit programs such as supplemental life and AD&D, legal plan, pet insurance, critical illness, accident and hospital indemnity; tuition reimbursement; transit; the Applause Program; employee stock purchase plan; and the WD Savings 401(k) Plan.