Job Title Intellectual Property Attorney in San Francisco, CA
Job Profile
Patent Counsel
The candidate will have primary responsibility for managing the strategic issues affecting the company's patent position and the continued development and evolution of its patent portfolio. Will also be expected to support related legal matters, including reviewing license agreements, and other agreements involving IP. Responsibilities: Develop and implement the company's global IP strategies and policies. Identify inventions that can be patented and conduct invention-disclosure meetings. Develop company's worldwide patent position including managing and leveraging outside patent counsel, performing quality review of patent applications and practices, and preparing new patent applications and prosecuting same. Develop, coordinate and review patent research and analysis projects, including prior art searches, competitive intelligence, landscapes, patentability analyses, infringement/non-infringement analyses, invalidity analyses. Coordinate invention harvesting and invention disclosures for potential patent application filing, including conducting patentability searches and portfolio analyses. Coordinate and manage the patent committee. Interact with product development and engineering teams, including proactive development of IP strategies. Educate company employees on patents and the patent process. Develop an in-depth understanding of competitor products and patent portfolios. Review agreements involving technology and intellectual property matters, including drafting intellectual property agreements, licenses or clauses when requested. Review sales, advertising, and promotional materials and programs in light of potential intellectual property issues. Provide timely counsel on all intellectual property issues, including copyright and trademark issues.
Qualification and Experience
The candidate should have BA/BS degree, with excellent academic credentials and computer science, electrical engineering or related discipline preferred. Should have Juris Doctor from a reputable U.S. law school and licensed to practice in at least one state. Must be registered to practice before the U.S. Patent and Trademark Office. Must be eligible to practice before the U.S. Patent and Trademark Office. Should have 5 years' experience obtained in-house or in a prestigious law firm environment. Should have demonstrated experience identifying technologies that can be patented. Combination of in-house and law-firm experience is preferred. Familiarity with international patents and patent strategy is needed. Should have solid technical knowledge of computer science, the Internet and hardware. Strong written and verbal communication skills are needed.