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Intellectual Property Counsel The candidate will review and steer patent applications and responses prepared by outside Counsel. Manage outside Patent Counsel to ensure quality and timely work product and a docket of active patent matters. Will counsel on Intellectual Property challenges and determine strategic areas for patenting, and identify patentable subject matter (including first level prior art searching). Conduct invention harvest sessions and manage the invention disclosure process. Conduct preliminary trademark searches and oversee outside Counsel on trademark searches and trademark maintenance. Consult and discuss business agreements, evaluate and reply to potential acquisitions and licensing opportunities. Educate Engineers and Business teams on IP challenges along with being able to present to Engineering teams/Management. BA/BS degree in a technical field such as Electrical, Mechanical or Environmental Engineering, Computer Science or Materials Science, or equivalent practical experience is needed. Admitted to practice before the U.S. Patent and Trademark Office as a Patent Attorney, and Admitted to the State Bar of California and in good standing (or otherwise authorized to practice law in California such as by having registered in-house counsel status) is essential. JD degree is preferred. Experience with complex commercial agreements and related IP provisions are preferred. In-house experience managing patent and other intellectual property matters is preferred. Should preferably have knowledge of industry tools and resources to analyze patent portfolios. Understanding of artificial intelligence, robotics, physics, clean energy and/or related technologies is preferred. Should have 5+ years of relevant legal experience. Experience in identifying patentable technologies and analysis, acquisition, licensing and handling of third-party demands are needed.
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