Intellectual Property Counsel

Key Responsibilities

• Develop and execute a global IP strategy that supports the company's innovation pipeline and commercial goals.
• Manage the company's patent, trademark, copyright, and trade secret portfolios.
• Work closely with R&D and engineering teams to identify patentable inventions.
• Manage the preparation, filing, and prosecution of patent applications worldwide, both directly and through the supervision of outside counsel.
• Conduct patentability, freedom-to-operate (FTO), and infringement/validity analyses.
• Manage the company's global trademark portfolio, including clearance searches, filing, prosecution, and maintenance.
• Advise marketing and business teams on proper trademark usage and brand protection strategies.
• Oversee enforcement actions against trademark infringers.
• Draft, review, and negotiate a variety of IP-related agreements, including licensing agreements, joint development agreements, non-disclosure agreements (NDAs), and master service agreements (MSAs).
• Provide IP support for M&A activities, including due diligence and integration.
• Manage and provide strategic direction on IP litigation, oppositions, and other contentious proceedings in collaboration with outside counsel.
• Respond to cease-and-desist letters and other third-party claims.
• Serve as the primary legal advisor to internal stakeholders (including R&D, product development, marketing, and senior management) on all IP-related issues.
• Develop and conduct internal training programs on IP best practices, invention disclosure processes, and confidentiality.
• Develop and implement policies and procedures to protect the company's trade secrets and confidential information.

Qualifications

• Education: Juris Doctor degree from an ABA-accredited law school.
• Experience: Admission to at least one state bar and in good standing. Registration to practice before the U.S. Patent and Trademark Office (USPTO). A minimum of 5 to 10 years of experience in intellectual property law, with a preference for some in-house experience. Strong background in patent prosecution and portfolio management.
• Preferred Qualifications: An undergraduate or advanced degree in Electrical Engineering, Mechanical, Systems or Computer Science. Experience managing a global trademark portfolio. Proven experience in drafting and negotiating complex IP agreements. Experience managing IP litigation or other contentious matters. Familiarity with open-source software licensing and compliance.

Soft Skills

• Excellent analytical, problem-solving, and communication skills, with the ability to translate complex legal issues into clear, practical advice for business partners.
• Strong business acumen and the ability to align legal strategy with corporate objectives.
• Familiarity or experience with AI Tools and IP issues.
• Highly organized with the ability to manage multiple projects simultaneously under tight deadlines.
• A proactive, self-starter attitude with a strong sense of ownership and accountability.
• Exceptional interpersonal skills and a commitment to being a collaborative team player.
• High ethical standards and professional integrity.

Technology Stack

• MS Office Suite

Physical Requirements

• Must be able to remain in a stationary position for prolonged periods, operating a computer and other office equipment.
• The ability to see close-up is required to prepare and analyze data and figures, view a computer terminal, and read extensively.
• Must be able to exchange accurate information, both in person and over the phone, with colleagues, management, and external partners.
• The ability to move about inside the office to access files, office machinery, and attend meetings is necessary.
• May occasionally need to lift and/or move up to 15 pounds of materials, such as files, binders, or a laptop.