Senior Counsel, Intellectual Property

Terabase Energy•Berkeley, CA

4d•Hybrid

About The Position

Terabase Energy is seeking its first dedicated IP counsel to build and lead the company’s intellectual property program. Reporting to the VP of Legal, this role owns IP strategy and day-to-day IP legal support across product lines including PlantPredict, Construct, SCADA, and Terafab, spanning AI-enabled SaaS, controls hardware, and physical AI and robotics-enabled construction. The position works closely with engineering, product, commercial teams, IT, executives, and outside counsel to protect inventions, assess IP risk, and support the company’s business priorities. The role combines patent strategy and portfolio management, freedom-to-operate and other third-party risk work, IP disputes and litigation, trademarks, trade secrets, copyright and open source matters, NDA and information-protection programs, and AI governance. The Senior Counsel will establish practical policies, processes, training, and tools, including AI-assisted NDA review and self-service workflows. The role also supports IP-related commercial agreements, product launches, partnerships, new market entry, and strategic transactions. Terabase is looking for a practical, technically fluent builder who has established IP programs and processes from the ground up, ideally in a start-up or scale-up environment. The successful candidate will be comfortable working as a team of one alongside a lean legal team and outside counsel, operating amid changing priorities and incomplete information, and communicating clear, business-oriented recommendations. This is a hybrid role based in the Capitol Corridor in California, with regular travel to the company’s Davis and Woodland offices, approximately 25%.

Requirements

Juris Doctor degree and an active license to practice law in at least one U.S. jurisdiction, with eligibility to practice in California, including as Registered In-House Counsel.
At least 8 years of intellectual property legal experience, ideally combining law firm and in-house practice.
Substantial patent experience in prosecution, portfolio management, or patent counseling, with the ability to read and critically evaluate claims.
Experience scoping and managing freedom-to-operate, landscape, or validity work and translating results into business decisions.
Experience selecting and directing outside counsel, including managing scope, quality, and budget.
Experience managing IP disputes or litigation, including demand letters, selection and direction of litigation counsel, and case strategy.
Experience negotiating NDAs and IP-related agreements and establishing standard positions or playbooks.
Working knowledge of trademarks, trade secrets, copyright, and open source licensing.
Technical fluency to engage credibly with electrical, mechanical, controls, software, AI, and robotics engineers.
Hands-on experience using AI tools in legal work, such as research, drafting, contract review, and patent or prior-art analysis, with the judgment to verify outputs, protect privileged and confidential information, and assess where AI is appropriate.
Strong business judgment and ability to distinguish legal risk from commercial risk and provide clear recommendations.
Clear, plain-English communication skills, including experience designing and delivering training for technical and non-technical audiences.
Experience supporting start-ups or scale-ups and a track record of building programs, processes, or functions from the ground up.
Comfort working in uncertain, changing environments, setting priorities, making sound decisions with incomplete information, and adjusting as the business evolves.

Nice To Haves

Registration to practice before the USPTO.
A degree in electrical, mechanical, or mechatronics engineering, computer science, physics, or a related technical field.
In-house experience at a growth-stage AI, physical AI, hardware, robotics, energy, cleantech, or industrial technology company.
Experience with solar, energy, construction, automation, controls/SCADA, AI, machine learning, physical AI, or robotics technologies.
Experience building IP program elements such as invention disclosure processes, patent review committees, inventor recognition programs, or IP training curricula.
Experience developing AI policies or governance, or advising on AI-related IP issues such as training data and AI-generated content.
Experience protecting AI and physical AI innovations, including patenting machine learning, computer vision, and robotics inventions and protecting models and datasets as trade secrets.
Experience with Ironclad or another CLM platform, or configuring AI-assisted contract review or self-service workflows.
Experience working with IT or security teams on information security, data classification, or confidentiality programs.

Responsibilities

Develop and execute a patent strategy aligned with the product roadmap and business priorities, including AI, machine learning, and physical AI systems.
Lead invention harvesting with engineers, evaluate and prioritize inventions, and run an invention review process.
Direct outside patent prosecution counsel on drafting, filing, prosecution, and foreign filing decisions; review applications and office action responses for quality, claim scope, and product alignment.
Manage outside IP counsel relationships and develop a forward-looking plan for firms and specialists as the company grows.
Manage the patent portfolio, docket, and IP budget, including maintenance and pruning decisions.
Advise on whether to protect technology such as AI models, training data, and robotics know-how through patents or trade secrets.
Identify and manage third-party patent risk for products and features, and scope and direct landscape, freedom-to-operate, and validity analyses.
Translate technical and legal analyses into clear recommendations for engineering and executive leadership.
Build IP risk checkpoints into product development so potential issues surface early.
Own IP disputes and litigation, including infringement allegations, trademark conflicts, and other IP claims.
Send and respond to cease-and-desist and demand letters; recommend enforcement, licensing, and settlement strategies.
Select, engage, and manage litigation counsel, and direct case strategy, budget, and staffing in partnership with the VP of Legal.
Lead responses to IP litigation and administrative proceedings such as inter partes review, including early case assessment, litigation holds, and coordination with insurers where applicable.
Monitor competitor patent activity and relevant IP developments.
Build and maintain IP policies and processes covering invention disclosure and assignment, trade secret protection, and open source software use.
Strengthen IP ownership practices, including employee and contractor invention assignment agreements and onboarding and offboarding practices.
Design and deliver IP training, including onboarding, engineering-focused invention disclosure and patent-risk training, and company-wide training on confidentiality, trade secrets, open source, and responsible AI use.
Manage the trademark portfolio, including clearance, filing, maintenance, watching, and brand-use guidance.
Own the NDA program, negotiate NDAs, and serve as the escalation point for non-standard terms.
Maintain the NDA playbook, including standard positions, acceptable fallbacks, and approval thresholds.
Implement the NDA playbook through AI-assisted review tools that enable business teams to handle routine NDAs with guardrails and escalation paths.
Partner with IT on company information-security and confidential-information policies, including information classification, handling third-party confidential information, and alignment with contractual commitments.
Lead and support AI policies and governance, including acceptable use of AI tools, protection of confidential information and IP in AI workflows, ownership of AI-generated output, and IP and data-rights questions involving AI products, physical AI, robotics, and vendors.
Support special projects with an IP component, including product launches, partnerships, new market entry, and strategic initiatives.
Support IP-centric joint development, license, technology, data, and collaboration agreements.
Partner with commercial counsel on IP ownership, licensing, data rights, and IP indemnity terms in customer, supplier, and partner agreements.
Support IP diligence and IP aspects of financings, partnerships, and strategic transactions.