Legal Counsel - Intellectual Property & Technology

Job Duties / Responsibilities

• Collaborate with senior technology leaders to develop and execute comprehensive patent strategies
• Manage and directly handle utility patent preparation and prosecution activities, including drafting and filing patent applications, responding to office actions, and coordinating with external patent counsel
• Serve as primary intellectual property (IP) point-of-contact for designated technology/business units
• Develop and advise on IP strategies and risk mitigation
• Provide day-to-day IP advice and support, including counseling of internal clients on various IP and technology topics
• Train clients and staff on IP-related matters
• Manage intellectual property disputes as they arise
• Draft, review, and negotiate IP-related agreements, including, but not limited to, non-disclosure agreements, development agreements, collaboration agreements, and technology licensing agreements
• Conduct IP due diligence for business transactions
• Conduct thorough legal research and draft legal opinions on risk assessment or freedom to operate, patentability, and invalidity as needed
• Stay current with changes in IP law and regulations and ensure compliance with relevant legal standards

Key Experience

• Juris Doctor (JD) degree from an accredited law school
• Admission to practice before the U.S. Patent and Trademark Office (USPTO) and a state bar
• Electrical engineering, mechanical engineering, or chemical engineering/chemistry background preferred, although other technical backgrounds will be considered
• Minimum of 4 years of experience in intellectual property law, with a focus on patent strategies and client counseling
• Strong background in patent prosecution, portfolio management, and strategic IP planning

Key Skills

• Strong negotiation skills and experience in preparation of agreements
• Excellent drafting, negotiation, and communication skills
• Proven ability to work collaboratively with cross-functional teams
• Expertise in use and/or counseling for artificial intelligence (AI) tools a plus