Counsel management and technologists of client groups on IP matters involving patents, trade secrets, trademarks and copyrights, and IP transactions
Analyze IP landscapes, perform IP risk assessments and develop IP sustainability strategies
Actively develop and manage a global patent portfolio (including patent budget management) to protect key differentiating aspects of Applied’s technologies, includingmanaging outside counsel on patent drafting andprosecution, improving quality, scope and breadth of patent applications & claims, and tracking patent budget and spending
Collaborate with Litigation team regarding IP procurement and enforcement strategies
Develop programs to protect IP and accomplish business goals including providing training to management and engineering teams
Lead and contribute to the development of business processes and policies to better enable achievement of business objectives, mitigate risk, reduce inefficiencies and improve effectiveness
Basic Qualifications:
Juris Doctorate (JD) from accredited law school
Bar Admissions: U.S. (CA or other state) and USPTO Registration Numbers
B.S. in Engineering, Physics, Computer Science, Chemistry or Materials Science
7+ years of legal experience in law firm and/or in-house legal departments with a focus in the following areas:
Patent portfolio development and management in the US and foreign jurisdictions, particularly Asia
Drafting and negotiation of agreements involving IP provisions, including licensing, collaboration, research and similar agreements
Knowledge of IP law in Asian countries, including China, Korea and Taiwan
Experience related to IP enforcement and litigation, including claim construction, patent invalidity, infringement and damages preferred
Familiar with global patent operations (e.g., patent administrations, billings, docketing practices, etc.) also preferred
Skills and Attributes:
Strong intellectual capacity and high personal standards of excellence
Strong business and technology acumen; capacity to understand the business and technology quickly
Understand how to translate business needs into IP portfolio development & management
Ability to work independently on a wide variety of tasks and drive results
Ability to prioritize and handle multiple competing tasks/projects at the same time
Excellent organizational skills, including attention to detail and ability to create specific action plans based on general guidance and deliver results
Ability to see the big picture and identify and design-out problems from the outset; continuous improvement mindset
Strong customer focus, both internal and external
Ability to work collaboratively across organizational boundaries, and with a diverse group of colleagues and internal clients in multiple countries
Ability to lead and ability to perform as part of a team
Flexible, personable and enjoys a dynamic corporate culture