US Senior IP Counsel/Patent Attorney

Hitachi•Santa Clara, CA

1d•Remote

About The Position

In further development of its Global IP Function, Hitachi Group has created a key role for a senior-level IP Counsel who will report to the Chief IP Officer (CIPO) and support Hitachi operations in the U.S. (location flexible, preferably NY or CA). This new position will afford the right candidate the opportunity to participate in an exciting period of growth for the company through IP leadership and support in the globalization of the Company’s activities in particular in the area of Social Innovation. This role is important to the advancement of Hitachi IP in the region and globally as an important partner and contributor to the growth of the Hitachi Group. Reporting to the regional IP lead, the primary focus of the role is to work with US regional businesses to provide IP guidance to operations in a business focused approach. The position will work closely with the CIPO, the Global IP Team and the regional businesses. In collaboration with other Group IP Departments, primary responsibilities of this role are directed to supporting the IP Legal Services and Patent Portfolio Development functions in furtherance of transformation of the global IP function.

Requirements

USPTO qualified Patent Attorney with admission to a U.S. State Bar.
Minimum of 10 years of experience in the legal field of intellectual property in a multi-national setting, including transactional matters (licensing and other IP-related contracts), enforcement of IP rights, and managing contested matters including litigation and pre-litigation advice, and developing patent portfolios, in particular in the areas of computer science, software and ITxOT/Physical AI.
Thorough expert knowledge of US IP laws, rules, regulations and practice and familiarity with the relevant counterpart systems (e.g., EU).
Strong patent prosecution skills.
Proven ability to quickly identify, prioritize and analyze issues, to create solutions, to communicate in a counseling role, and to work effectively and team with all levels of management and members of the IP and legal departments.
Strong ability to be a counselor to the group businesses through clear communication skills- written and oral.
Demonstrated ability to work with and manage outside counsels.
Experience working in a global IP environment.
Some regional travel will be required.
Fluency in English required.

Responsibilities

Partner cross functionally with Group Legal, R&D, and business teams to deliver proactive, business focused IP counseling.
Advise on IP matters in commercial, transactional, and dispute contexts, including pre litigation and litigation support.
Draft, negotiate, and manage IP related agreements, including licenses, technology development agreements, and NDAs.
Support IP aspects of M&A, strategic transactions, and business initiatives.
Counsel U.S. businesses on freedom-to-operate risk, conducting and/or supervising freedom to operate/clearance investigations.
Oversee and manage outside counsel across IP legal matters.
Contribute to development and execution of Global IP strategy, including policies and procedures.
Counsel U.S. businesses and technical leadership on patent strategy.
Wafting anork directly with engineers and technologists to identify patentable inventions and drive invention disclosure quality and volume.
Lead invention harvesting activities, including design reviews, brainstorming sessions, and innovation workshops.
Lead patent procurement and portfolio development efforts, including: Advising on patentability, conducting and/or supervising patentability investigation Drafting prosecuting U.S. patent applications; Coordinating international filing and prosecution strategies; Managing patent portfolios, including office action responses informed by business input; Overseeing outside counsel on global patent prosecution matters.
Manage and continuously improve invention disclosure submission, review, and evaluation processes.