Counsel, IP - Future Opportunity

Intuitive • Sunnyvale, CA

234d • $195,200 - $280,800 • Onsite

About The Position

The Counsel - IP Attorney will be primarily responsible for managing and protecting the company's intellectual property assets in the medical robotics space, including system hardware, instruments, and accessories. The role may require the attorney to both manage and perform direct work on many varied intellectual property and legal matters, including patent, trade secret, licensing, contract, trademark, trade dress and litigation matters. The attorney will interact daily with engineers, engineering management, and clinical specialists. The attorney will also manage outside lawyers and foreign associates and supervise their work products to ensure that company legal and intellectual property rights are maximized.

Requirements

• Minimum of 6 years experience total directly drafting and prosecuting patent applications in the United States.
• Exceptional familiarity with the Patent Cooperation Treaty and Paris Convention.
• Experience working with non-U.S. counsels in various foreign jurisdictions.
• Juris Doctorate.
• Membership in the CA State Bar, preferred.
• Registration with United States Patent and Trademark Office.

Nice To Haves

• Eligibility for Membership in the California State Bar.
• Strong academic background in engineering (robotics, mechatronics, mechanical engineering, applied physics or biomedical engineering fields preferred); practical engineering experience is preferred.

Responsibilities

• Counsel engineers and managers about how best to protect and exploit new company intellectual property.
• Evaluate the benefit of patent or trade secret protection for particular inventions.
• Evaluate the benefit of applying for United States and foreign patents in various markets to protect particular inventions.
• Lead invention identification meetings, review invention disclosures for decisions on IP actions, and direct application drafting meetings.
• Manage a substantial invention and international patent portfolio in designated technology areas.
• Supervise the preparation and prosecution of United States and foreign patent applications to ensure inventions are properly protected.
• Ensure patent applications are filed to meet legal department production goal deadlines by working with product managers, inventors, and outside lawyers.
• Review and edit patent applications and responses to patent office actions authored by outside lawyers.
• Personally draft patent applications and responses to patent office actions.
• Analyze various patents and IP portfolios owned by third parties.
• Conduct and/or supervise outside lawyers' patent searches.
• Advise engineers and engineering managers on the impact of patent claims on proposed and current development work.
• Support intellectual property and business litigation matters.
• Draft and negotiate commercial contracts to cover a variety of commercial needs.
• Participate in and lead cross-functional projects and initiatives involving the Legal Team.
• Perform in-house IP analytics using patent literature databases, advanced search and analysis software, and other available resources.

Benefits

• Market-competitive compensation packages, inclusive of base pay + commission, benefits and equity.
• Salary range for this position is $195,200 - $280,800.

What This Job Offers

• Industry: Miscellaneous Manufacturing
• Education Level: No Education Listed