SENIOR IP COUNSEL – Mid-Peninsula, CA

Publicly held software company seeks Senior IP Counsel to oversee all matters relating to patent and intellectual property matters as well as other general legal issues.

Reporting to the Vice President, General Counsel, the ideal candidate will provide legal counsel and strategy on all intellectual property matters including but not limited to overseeing patent filings and prosecution, managing patent litigation, performing patent analysis, managing patent dockets, various licensing activities, assertion matters and drafting legal documents. Other responsibilities will include supporting the General Counsel on all other broad based legal matters.

Responsibilities:

• Formulate global IP protection strategy

 • Manage patent litigation strategizing with and managing outside counsel, working closely with engineers, management and other lawyers in effective solutions and strategies.

 • Develop and manage patent portfolio, manage outside counsel and patent prosecution, improve quality, scope and limitability of patent claims, secure and manage funding for global priority patent filings.

 • Draft and negotiate various types of general legal agreements with suppliers, customers, and other entities.

 • Develop and present patent training to engineers and management to promote invention alert submission and to provide basic understanding in IP law to reduce litigation risk.

Requirements:

• Must be a registered patent attorney (U.S. Patent & Trademark Office).

• JD or LLB from accredited and recognized law school.

• 6-10 years experience in prosecution, pre-litigation counseling, and IP litigation is desired along with a mix of both law firm and in-house experience.

• Previous experience with general legal work in addition to patent experience a plus.

• Knowledge of the software industry a plus.

• Proven expertise in good business judgment and confidence to influence decision making processes.

• Excellent communication and presentation skills; ability to manage and counsel clients.

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