Job Description and Responsibilities
In this position, the Patent Counsel provides intellectual property (IP) legal services to clients primarily in the computer software and hardware arts.
Responsibilities for this position include but are not limited to:
- Preparation and prosecution of U.S. and foreign patent applications.
- Advising clients on freedom to operate in view of 3rd-party patents.
- Assisting in drafting and negotiating agreements, including licenses, joint development agreements, technology agreements, and nondisclosure agreements.
- Providing IP subject matter expertise to commercial attorneys.
- Assessing claims involving intellectual property rights by and against 3rd parties.
- Advising clients in the development and implementation of intellectual property protection strategies to support the needs of individual business units.
- Four to seven years of experience in drafting and prosecuting U.S. and foreign patent applications; prep and pros experience in the software arts required. Expertise in subject matter eligibility required.
- Juris Doctorate degree and undergraduate, or graduate, degree in applicable engineering or science, preferably in electrical engineering or computer science.
- Admission to practice before U.S. Patent and Trademark Office and admission to at least one State or District of Columbia Bar. Eligible for Registered In-House Counsel status in California.
- Experience evaluating third party patents, performing freedom-to-operate studies, and drafting freedom-to-operate opinions.
- Ability to implement and monitor intellectual property strategies to support business needs and make changes to such strategies as needed.
- Experience drafting license agreements, development agreements, and nondisclosure agreements.
- Experience practicing in both a large law firm and an in-house legal department desired.
- Varies upon the needs of the department
- This position requires travel 5-10% of the time.
- This position will be performed in an office setting. The position will require the incumbent to sit and stand at a desk, communicate in person and by telephone, frequently operate standard office equipment, such as telephones and computers, reach with hands and arms, and bend or lift up to 25 pounds.
Visa will consider for employment qualified applicants with criminal histories in a manner consistent with the requirements of Article 49 of the San Francisco Police Code.
Visa is an EEO Employer. Qualified applicants will receive consideration for employment without regard to race, color, religion, sex, national origin, sexual orientation, gender identity, disability or protected veteran status. Visa will also consider for employment qualified applicants with criminal histories in a manner consistent with EEOC guidelines and applicable local law.