Senior Counsel- Intellectual Property USA

Responsibilities

• Offer strategic guidance to internal stakeholders on making informed and risk-based decisions regarding intellectual property issues.
• Develop and grow a technologically challenging patent portfolio.
• Partner with technical teams to identify and harvest intellectual property assets.
• Search, understand, and explain complex inventions at the Patent Committee and make recommendations in the context of our business needs and product development goals.
• Absess the competitive IP landscape and provide guidance to business leaders.
• Draft and negotiate complex IP agreements and other agreements having IP sensitive provisions.
• Partner with members of development engineering, global supply chain, manufacturing engineering, and other company associates to assist in the company’s efforts to develop, acquire, and sell IP assets.
• Advise the business as an expert on all aspects of IP (patents, technical data, trade secrets, copyrights, and trademarks) regarding strategies, enforcement, protection, avoidance, and collaborations.
• Manage outside counsel during the drafting of patent applications to create a strong and defensible patent portfolio.
• Drafting patent applications may also be part of the responsibilities of this position.
• Provide strategic and cost efficient management for a large patent docket of intellectual property assets.
• Provide advice on a wide variety of intellectual property topics for the engineering and business teams, including assessment of specific IP assets and the potential impact on business outcomes.

Qualifications

• J.D. from an accredited U.S. law school with a license to practice in one or more jurisdictions.
• Registered U.S. Patent Attorney.
• Technical degree (B.S., M.S., or Ph.D.) in electrical engineering, physics, or related field with the ability to become well versed in new technologies.
• At least 6-8 years of experience in patent law, including drafting and prosecuting patent applications, assessing freedom to operate, and transactional IP work.