Job Details

Licensing / Intellectual Property Counsel

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Years of Experience

Min 3 yrs required


San Jose, CA

Date Last Verified

Oct 17,2017

Posted on

Aug 03,2017
Practice Area
Intellectual Property >> Intellectual Property - General
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Licensing / Intellectual Property Counsel The candidate will work with business and technical leaders to develop and implement a short-term and long-term I.P. strategy specific to each technology, and help the business units structure partnerships with customers. The strategy should employ patents, copyrights, mask works, trade secrets and defensive publications to properly protect each product line’s future revenue streams throughout the world. Provide strategic and tactical guidance to business units seeking to license or monetize their technology to customers and other parties. Orchestrate patent committee meetings to effectively review new disclosures, and shepherd currently pending applications. Interpret feedback from office actions to make more informed determinations of when to abandon pending applications. Advise product developers about how best to identify and design around third parties’ intellectual property. Identify key I.P. assets and develop plans for using those I.P. rights as necessary to further long-term business objectives. Compare a business unit’s I.P. assets with those of its closest competitors to determine absolute and relative I.P. strength. Actively encourage the development and protection of new I.P. rights in strategic areas. Assist engineering staff regarding evaluation of patents offered for sale by the company and third parties. Support the Company’s Assistant General Counsel for Intellectual Property Counsel with procurement and protection of the company’s patents, trademarks, copyrights, mask works, defensive publications and trade secrets. Also support university partnerships, and outbound patent license agreements. Will need to function autonomously to perform a wide variety of duties including: interacting with product line directors, technical fellows, inventors, patent committees and outside counsel; maintaining a patent database; reviewing incoming and outgoing correspondence and bills; training and management of I.P. paralegals and assistants; and preparation of reports for use in discussions, presentations and meetings. Juris Doctor from ABA accredited law school, or equivalent international credential required. B.S. or advanced degree in Electrical Engineering, Physics, Materials Science, or Computer Science required. 3+ years of experience is required, but more senior applicants are also expressly encouraged to apply. Excellent communication skills required. Professional appearance, demeanor and behavior. Strong organizational, time-management, and computer skills required. Knowledge of patent prosecution is essential. Experience with licensing (software, hardware or patent) is also highly valued. Licensing experience and experience in the semiconductor industry are strongly preferred.

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Job ID: 3981

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