Senior IP Counsel/Patent Attorney

Role Overview

• Partner cross functionally with Group Legal, R&D, and business teams to deliver proactive, business focused IP counseling.
• Advise on IP matters in commercial, transactional, and dispute contexts, including pre litigation and litigation support.
• Draft, negotiate, and manage IP related agreements, including licenses, technology development agreements, and NDAs.
• Support IP aspects of M&A, strategic transactions, and business initiatives.
• Counsel U.S. businesses on freedom-to-operate risk, conducting and/or supervising freedom to operate/clearance investigations.
• Oversee and manage outside counsel across IP legal matters.
• Contribute to development and execution of Global IP strategy, including policies and procedures.
• Counsel U.S. businesses and technical leadership on patent strategy.
• Wafting anork directly with engineers and technologists to identify patentable inventions and drive invention disclosure quality and volume.
• Lead invention harvesting activities, including design reviews, brainstorming sessions, and innovation workshops.
• Lead patent procurement and portfolio development efforts, including: Advising on patentability, conducting and/or supervising patentability investigation Drafting prosecuting U.S. patent applications; Coordinating international filing and prosecution strategies; Managing patent portfolios, including office action responses informed by business input; Overseeing outside counsel on global patent prosecution matters.
• Manage and continuously improve invention disclosure submission, review, and evaluation processes.

Requirements

• USPTO qualified Patent Attorney with admission to a U.S. State Bar.
• Minimum of 10 years of experience in the legal field of intellectual property in a multi-national setting, including transactional matters (licensing and other IP-related contracts), enforcement of IP rights, and managing contested matters including litigation and pre-litigation advice, and developing patent portfolios, in particular in the areas of computer science, software and ITxOT/Physical AI.
• Thorough expert knowledge of US IP laws, rules, regulations and practice and familiarity with the relevant counterpart systems (e.g., EU).
• Strong patent prosecution skills.
• Proven ability to quickly identify, prioritize and analyze issues, to create solutions, to communicate in a counseling role, and to work effectively and team with all levels of management and members of the IP and legal departments.
• Strong ability to be a counselor to the group businesses through clear communication skills
• written and oral.
• Demonstrated ability to work with and manage outside counsels.
• Experience working in a global IP environment.
• Some regional travel will be required.
• Fluency in English required.

Benefits

• Health insurance
• 401(k) matching
• Flexible work hours
• Paid time off
• Remote work options