Senior Counsel, Intellectual Property

Terabase Energy•Berkeley, CA

5d•$205,000 - $250,000•Hybrid

About The Position

Terabase Energy is seeking its first dedicated Intellectual Property Counsel to build and lead the company’s IP program. Reporting to the VP of Legal, this role owns IP strategy and day-to-day legal support across PlantPredict, Construct, SCADA, and Terafab, spanning AI-enabled SaaS, controls hardware, and physical AI and robotics-enabled construction. The role partners closely with engineering, product, business teams, IT, and outside counsel to protect inventions, manage patent and trademark portfolios, assess third-party risk, and support IP aspects of commercial agreements, strategic projects, and transactions. The position also leads IP disputes and litigation, establishes practical IP and AI policies, runs company-wide IP training, and owns the NDA program, including playbooks and self-service tools. The ideal candidate has built IP programs and processes from the ground up, brings structure without slowing the business, and is comfortable working as a team of one in an evolving environment with incomplete information and shifting priorities. The role calls for a technically fluent, practical lawyer who can work with engineers and communicate clear, decision-ready recommendations to executives. This is a hybrid role based in the Capitol Corridor, California, with regular travel to Terabase offices in Davis and Woodland, California, approximately 25%. The posted annual salary range is $205,000–$250,000, with individual compensation depending on location and job-related factors.

Requirements

JD 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, such as prosecution, portfolio management, or patent counseling, and the ability to critically read and evaluate claims.
Experience scoping and managing freedom-to-operate, landscape, or validity work and translating results into business decisions.
Experience selecting and effectively directing outside counsel, including scope, quality, and budget management.
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 use of 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 useful.
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 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 adapting 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 AI 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 product roadmaps and business priorities, including AI, machine learning, and physical AI systems.
Lead invention harvesting with engineers, prioritize inventions, and run a lightweight invention review process.
Direct outside prosecution counsel on patent 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 plan for firms and specialists as the portfolio, products, and geographic footprint grow.
Manage the patent portfolio, docket, and budget, including maintenance and pruning decisions.
Advise whether technologies such as AI models, training data, and robotics know-how should be protected by patents or trade secrets.
Identify and manage third-party patent risks for new products and features; scope and direct landscape, freedom-to-operate, and validity analyses with outside counsel.
Translate technical and legal analysis into clear recommendations for engineering and executive leadership.
Build IP risk checkpoints into product development so issues surface while design choices remain flexible.
Own IP disputes and litigation from initial assessment through resolution, including infringement allegations, trademark conflicts, and other IP claims.
Send and respond to cease-and-desist and demand letters, and recommend enforcement, licensing, and settlement strategies.
Select, engage, and manage litigation counsel, and direct case strategy, budget, and staffing with the VP of Legal.
Lead responses to IP litigation and administrative proceedings, including inter partes review, 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 related onboarding and offboarding processes.
Design and deliver IP training for onboarding, engineering teams, and the company, covering invention disclosure, patent risk, 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 using AI-assisted review tools that enable business teams to handle routine NDAs with clear guardrails and escalation paths.
Partner with IT on company information security and confidential-information policies, including information classification, handling third-party confidential information, and contractual confidentiality alignment.
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 and robotics systems, and AI vendors.
Support special projects involving IP, such as product launches, partnerships, new market entry, and other 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.