Patent Counsel

Qualcomm•San Diego, CA

4d•$169,500 - $254,300•Onsite

About The Position

At Qualcomm, intellectual property is not a passive asset or an item on a checklist. Each patent reflects inspired innovation, careful analysis, focused prosecution, and a clear connection to Qualcomm’s technology roadmaps and business strategies. Because Qualcomm inventors continue to push the boundaries of what is possible, Qualcomm patent attorneys must do the same: architect and build patent portfolios designed to protect innovation, enable new and growing technology and business teams, support licensing opportunities, and generate meaningful revenue that can be reinvested in R&D. This makes Qualcomm’s Patent Department unique. We apply deep experience and care to develop high-quality, high-value patents that are meaningful to Qualcomm. We seek talented and motivated patent counselors who can apply sound legal judgment, critical technical depth, and a collaborative mindset to build patent assets that are as robust and powerful as the products and technologies they protect. Patent attorneys possessing a wide array of patent experience that practice with a business focus and willing to embrace frontier patent work are desired. We are currently seeking patent attorneys with experience in wireless communications, mobile compute, and related technical standards. This, of course, includes 5G cellular standards and emerging 6G technologies. Specific responsibilities include strategic portfolio management, managing outside counsel, drafting responses to official communications, and interviewing patent examiners. Our attorneys also perform infringement, clearance, patentability, and validity analyses, and collaborate with counsel across multiple jurisdictions to ensure compliance with local practices and laws. Additional responsibilities may include legal analysis of products, licenses, standards, contracts, and potential acquisitions or investments. Candidates must be capable of understanding complex technologies, responding to rapidly changing business plans, and identifying patent opportunities with strategic significance. Candidates having experience in leveraging new and advanced computing tools will have opportunities to further enhance our cutting-edge legal practices. This is not a place to rest on prior accomplishments; it is a challenging environment for attorneys who want to expand their professional capabilities while working with similarly driven professionals in a world-class legal department.

Requirements

Juris Doctorate degree or international equivalent.
5+ years of relevant experience as counsel at a law firm or in-house.
Active bar license or other lawful ability to practice law in the state or jurisdiction where the employee will be located (for example, ability to gain admission as registered in house counsel).
Candidates must be capable of understanding complex technologies, responding to rapidly changing business plans, and identifying patent opportunities with strategic significance.

Nice To Haves

Master's degree or PhD in Electrical Engineering, Computer Engineering, Physics, or related field.
Non-US: Passed bar for the country in which they practice.
5+ years of patent law experience at a law firm or in-house.
3+ years of experience in patent preparation and prosecution in wireless communication fields (with an emphasis on 5G cellular connectivity and related technical standards).
2+ years of engineering experience in software, electrical, communications, or related fields.
2+ years of experience in patent preparation and prosecution in software, electrical, communications, or related fields.
2+ years of managing an international patent portfolio, including a strong ability to direct the efforts of outside counsel and a familiarity with patent laws and practices in non-U.S. jurisdictions.
Candidates having experience in leveraging new and advanced computing tools will have opportunities to further enhance our cutting-edge legal practices.

Responsibilities

Develops patents and supports the patent portfolio based on knowledge of products, technology, and engineering principles related to one's portfolio.
Manages dockets, cases, and/or initiatives by planning resources (e.g., staff, time, tools), aligning on expectations for work product and deliverables, and tracking progress against milestones.
Reviews work of outside counsel and support staff to ensure work product is aligned with strategies and plans.
Analyzes strategic importance of claims, assesses prior art, and develops arguments to present to patent offices.
Develops and analyzes claim charts that account for all patent related information to support licensing and enforcement activities.
Conducts patent analyses (e.g., infringement, validity) with minimal guidance to make recommendations around litigating, protecting, and/or licensing patents.
Maintains up-to-date awareness of domestic and foreign patent laws, rules, and best practices to prepare and prosecute patents worldwide.
Participates in discussions, meetings, and portfolio and/or case reviews with colleagues to address requirements and understand implications of one's work.
Helps to identify areas or technologies related to one's portfolio that need more or less IP protection.
Collaborates with engineering teams to collect, develop, and promote submission of IDFs to support portfolio development.
Provides advice and support on IP department initiatives and legal matters based on knowledge of laws, department policies, best practices, and legal risks.
Works with team to recommend decisions to appeal, continue prosecution, and/or file continuation/divisional applications based on legal analysis.
Keeps leaders, team members, and stakeholders properly updated on the status of work assignments, seeking guidance when necessary.
Strategic portfolio management
Managing outside counsel
Drafting responses to official communications
Interviewing patent examiners
Performing infringement, clearance, patentability, and validity analyses
Collaborating with counsel across multiple jurisdictions to ensure compliance with local practices and laws
Legal analysis of products, licenses, standards, contracts, and potential acquisitions or investments