Intellectual Property Counsel

Position Overview

We are seeking a highly motivated and experienced Intellectual Property Counsel to join our in-house legal team. This individual will be a key advisor on all matters related to intellectual property, playing a critical role in developing, protecting, and enforcing our global IP portfolio. The ideal candidate will be a strategic thinker with a strong foundation in patent and trademark law, capable of providing practical legal advice that aligns with our business objectives.

Key Responsibilities

• Develop and execute a global IP strategy that supports the company's innovation pipeline and commercial goals.
• Manage the company's patent, trademark, copyright, and trade secret portfolios.
• Work closely with R&D and engineering teams to identify patentable inventions.
• Manage the preparation, filing, and prosecution of patent applications worldwide, both directly and through the supervision of outside counsel.
• Conduct patentability, freedom-to-operate (FTO), and infringement/validity analyses.
• Manage the company's global trademark portfolio, including clearance searches, filing, prosecution, and maintenance.
• Advise marketing and business teams on proper trademark usage and brand protection strategies.
• Oversee enforcement actions against trademark infringers.
• Draft, review, and negotiate a variety of IP-related agreements, including licensing agreements, joint development agreements, non-disclosure agreements (NDAs), and master service agreements (MSAs).
• Provide IP support for M&A activities, including due diligence and integration.
• Manage and provide strategic direction on IP litigation, oppositions, and other contentious proceedings in collaboration with outside counsel.
• Respond to cease-and-desist letters and other third-party claims.
• Serve as the primary legal advisor to internal stakeholders (including R&D, product development, marketing, and senior management) on all IP-related issues.
• Develop and conduct internal training programs on IP best practices, invention disclosure processes, and confidentiality.
• Develop and implement policies and procedures to protect the company's trade secrets and confidential information.

Qualifications

Education:

• Juris Doctor degree from an ABA-accredited law school.

Experience:

• Admission to at least one state bar and in good standing.
• Registration to practice before the U.S. Patent and Trademark Office (USPTO).
• A minimum of 5 to 10 years of experience in intellectual property law, with a preference for some in-house experience.
• Strong background in patent prosecution and portfolio management.

Preferred Qualifications:

• An undergraduate or advanced degree in Electrical Engineering, Mechanical, Systems or Computer Science.
• Experience managing a global trademark portfolio.
• Proven experience in drafting and negotiating complex IP agreements.
• Experience managing IP litigation or other contentious matters.
• Familiarity with open-source software licensing and compliance.