Job Details

Patent Counsel

Company name

Organization Type

In-House

Job Type

Attorney

Years of Experience

Min 10 yrs required

Location

Santa Clara, CA

Posted on

Aug 03,2017
Practice Area
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Hard Sciences >> Computer Engineering
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Patent Counsel The candidate will interact with various groups across the company including the engineering and product development teams. Own and manage the patent function while also assisting with technology deals and general commercial matters. Draft and prosecute patent applications for filing with the USPTO and various patent offices, working with outside counsel on filings. Render expert legal advice on protection of intellectual property rights (IPRs) with inventions and in products/services. Operate patent harvesting program, integrating deeply with engineering and product teams. Manage patent portfolio (maintain status charts, manage filing schedules and deadlines. Investigate and render legal advice in connection with third-party IP claims. Conduct and render expert legal advice in connection with product IP clearances, patent investigations, and open source licenses. Draft and render expert legal advice in connection with agreements/transactions (e.g., mergers and acquisitions, confidentiality agreements, general IP terms, IP transfer agreements, licenses). Prepare, review, and edit commercial contracts, new work orders, amendments, non-disclosure agreements and other documents of medium complexity in accordance with corporate policy. Act as an interface with the internal business teams regarding contractual issues; resolve issues and communicate approach. J.D. from an accredited institution and Patent Bar required. Admission and in good standing to practice law in a U.S. state and before the USPTO required. 10+ years patent prosecution experience including experience with preparation of patent applications based upon original invention disclosures required. B.S. in engineering (computer or electrical engineering preferred) from an accredited institution required. Commercial contracting experience preferred. Proficiency with Microsoft Office required. Exceptional written and verbal communication skills required.

Additional info

Requisition ID: 2442

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