Job Details

Patent Strategy Counsel

Company name

Organization Type

In-House

Job Type

Attorney

Years of Experience

5-10 yrs required

Location

San Jose, CA

Date Last Verified

Aug 11,2017

Posted on

Jun 10,2017
Practice Area
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Hard Sciences >> Physics
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Hard Sciences >> Electrical Engineering
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Hard Sciences >> Computer Science
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Patent Strategy Counsel Duties: Leverage deep knowledge of technology landscape, and the internet, software and Fintec (financial technology) markets to improve patent claim quality and applicability. Proactive, strategic prosecution of patent claims crafted on specific technology features. Utilize deep understanding of defensive and offensive patent utilization strategies to prepare claim charts and evidence of use assessments. Independent management of prosecution docket, with an emphasis on mining of patent assets. Employ different negotiation styles situationally to benefit.

Qualification and Experience

Qualifications: Undergraduate degree in Computer Science, Electrical Engineering, Physics or the equivalent. JD Degree and current California Bar membership required. USPTO license desirable. 5-10 years of combined experience in patent prosecution and litigation. Prior in house experience desired. Deep understanding of defensive and offensive patent utilization strategies. Deep knowledge of Internet, payments, fintech and software technologies relevant to company’s business ecosystem, whether from previous legal or technical experience. Excellent patent analysis abilities, including development of non-infringement/infringement, invalidity/validity and deep understanding of claim construction considerations. Deep focus on preparing claim charts for prosecution of claims and to establish evidence of use. Some travel will be required.

Additional info

Job ID: R0016455

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