Chief Intellectual Property Counsel

Power Integrations•San Jose, CA

2d•$241,000 - $330,000

About The Position

The Chief Intellectual Property Counsel serves as the Company’s senior intellectual property leader and is responsible for the development, protection, management, enforcement, and strategic deployment of the Company’s global intellectual property portfolio. Reporting directly to the General Counsel, this role leads all patent, trademark, trade secret, and intellectual property matters worldwide and manages a team of patent attorneys, patent agents, and IP paralegals. The Chief Intellectual Property Counsel is responsible for establishing and executing the Company’s intellectual property strategy to support business objectives, protect technological innovation, strengthen competitive advantages, and maximize the value of the Company’s intellectual property assets. The role serves as the Company’s primary subject-matter expert on all intellectual property matters and partners closely with engineering, executive leadership, product development, and business teams to identify, protect, and leverage innovation.

Requirements

J.D. from an accredited law school.
Active membership in at least one U.S. state bar.
Registered to practice before the United States Patent and Trademark Office (USPTO).
Undergraduate or advanced degree in electrical engineering, physics, semiconductor engineering, computer engineering, or a related technical discipline strongly preferred.
12+ years of progressive intellectual property experience, including significant patent preparation and prosecution experience.
Demonstrated experience managing a substantial global patent portfolio.
Significant experience drafting and prosecuting U.S. patent applications, particularly in semiconductor, power electronics, analog, mixed-signal, power conversion, or related technologies.
Experience leading and managing patent attorneys, patent agents, and intellectual property professionals.
Experience supervising foreign patent prosecution through outside counsel.
Experience advising senior executives on intellectual property strategy and risk management.
In-house public company experience strongly preferred.
Deep expertise in U.S. and international patent law and prosecution practice.
Strong patent drafting, prosecution, and portfolio management capabilities.
Demonstrated ability to formulate and execute strategic intellectual property initiatives.
Strong leadership, management, and coaching skills.
Excellent judgment and business-oriented problem-solving abilities.
Effective written and verbal communication skills with engineers, executives, and boards of directors.
Ability to balance legal risk, business objectives, and resource constraints.
Strong project management and organizational skills.

Nice To Haves

Undergraduate or advanced degree in electrical engineering, physics, semiconductor engineering, computer engineering, or a related technical discipline strongly preferred.
In-house public company experience strongly preferred.

Responsibilities

Develop and execute the Company’s global intellectual property strategy in alignment with corporate, product, and technology objectives.
Serve as the Company’s principal advisor on all intellectual property matters, including patents, trademarks, copyrights, trade secrets, licensing, freedom-to-operate, and IP risk management.
Advise executive management and the General Counsel regarding strategic IP opportunities, risks, portfolio development, and competitive positioning.
Establish policies, procedures, and best practices for intellectual property protection and management.
Lead intellectual property portfolio reviews and provide recommendations regarding patent filing, maintenance, licensing, acquisition, enforcement, and abandonment decisions.
Monitor industry and competitor patent activity and identify emerging opportunities and risks.
Direct and oversee the Company’s invention disclosure program, including disclosure generation, harvesting, review, evaluation, prioritization, and filing decisions.
Partner closely with engineering and technology teams to identify innovations suitable for patent protection.
Responsible for drafting patent applications and reviewing those applications prepared by internal patent attorneys and patent agents to ensure consistency, quality, and strategic alignment.
Establish patent filing strategies that optimize portfolio value while effectively managing costs.
Lead prosecution of the Company’s U.S. patent portfolio, including preparation and filing of responses to Office Actions, examiner interviews, appeals, and related proceedings.
Supervise and review patent prosecution activities conducted by internal legal professionals.
Manage outside counsel responsible for foreign patent prosecution and ensure alignment with the Company’s global filing strategy.
Oversee foreign filing decisions, national phase entries, continuation strategies, and portfolio optimization initiatives.
Direct maintenance and annuity programs for worldwide patent assets, including budget oversight and strategic maintenance reviews.
Develop and manage patent prosecution and maintenance budgets.
Provide intellectual property support for commercial transactions, strategic partnerships, acquisitions, and licensing arrangements.
Advise on freedom-to-operate considerations and patent clearance strategies.
Lead responses to intellectual property disputes, invalidity assertions, licensing demands, and infringement allegations.
Support litigation matters involving patents, trademarks, trade secrets, and other intellectual property rights.
Coordinate with internal and external counsel regarding IP-related disputes, transactions, and strategic initiatives.
Oversee the Company’s global trademark portfolio, including clearance, registration, maintenance, enforcement, and brand protection activities.
Direct trade secret protection programs, policies, employee education, and confidentiality initiatives.
Ensure appropriate protection and documentation of proprietary technology and confidential information.
Lead, mentor, develop, and manage a team of IP attorneys, patent agents, and IP paralegals.
Establish performance objectives, workload allocation, and professional development plans for team members.
Foster a culture of innovation, collaboration, operational excellence, and continuous improvement.
Prepare and deliver educational programs for employees to support the Company’s goals to develop and maintain its IP portfolio.
Manage relationships with outside counsel, patent service providers, annuity providers, and foreign associates.