Position OverviewWe are seeking a highly motivated and experienced Intellectual Property Counsel to join our in-house legal team. This individual will be a key advisor on all matters related to intellectual property, playing a critical role in developing, protecting, and enforcing our global IP portfolio. The ideal candidate will be a strategic thinker with a strong foundation in patent and trademark law, capable of providing practical legal advice that aligns with our business objectives.
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.
QualificationsEducation:- 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:Physical Requirements- Must be able to remain in a stationary position for prolonged periods, operating a computer and other office equipment.
- Requires the frequent and repetitive use of hands and fingers to handle, feel, or operate objects, tools, or controls.
- 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.
- This role may require occasional domestic or international travel to other company sites or for meetings.
This job description may not be inclusive to the duties and responsibilities listed. Additional tasks may be assigned to the employee from time to time or the scope of the job may change as needed by business demands.
