IP Attorney, Senior

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The Senior IP Counsel will be responsible for portfolio management and patent analysis to develop patent strategies and market positioning based on competition and industry trends. This position is based in Albany, NY or Austin, TX.

Job Responsibilities

• Patent Portfolio Development
  • Coordinate invention disclosure submissions and reviews
  • Organically grow invention disclosure submissions based on market trends and competitive analysis
  • Proactively recommend protection for innovations developed in research, incubations, and invention harvests
  • Work with teams to define strategic areas for invention development based on industry trends and needs
  • Train new employees in invention disclosure preparation and submission
  • Identify criteria for the selection of invention disclosures to pursue for patent protection or to maintain as a trade secret
  • Work with outside counsel to prepare and file patent applications based on approved invention disclosures
  • Prepare and file patent applications in-house on an as-needed basis
  • Provide guidance to teams on various aspects of patents, trademarks and other IP
  • Develop working vocabulary and technical understanding of all aspects of semiconductor manufacturing including etching, film deposition, cleaning, and bonding 
  • Create, build, and foster innovative culture within TEL
  • Collaborate with team members in Japan and around the world to explore and develop opportunities for innovation
• Patent Prosecution
  • Evaluate patent prosecution documents,
  • Provide guidance to teams regarding relevant cited art
  • Decisively prune assets based on internal and external factors
  • Oversee the filing and prosecution of patent applications in the U.S. and internationally
  • Objectively assess and provide constructive feedback to outside counsel
  • Actively manage costs to appropriate level
• Patent Monitoring and Clearance
  • Create and manage automated patent monitoring for critical technology sectors
  • Assess patent and other IP positioning of competitors (i.e., freedom to operate)
• IP Contract Strategy, Negotiation, and Drafting   
  • Support execution of Company IP strategies though the drafting, architecting, and review of development agreement contracts, patent licenses, and other IP related contract negotiations
  • Structure and/or negotiate in-bound or out-bound patent licenses
  • Evaluate patent portfolios to guide teams on potential partnership  and licensing opportunities
• Executive Counseling
  • Advise senior management on legal matters related to IP
  • Communicate effectively with all levels of management to address needs and identify opportunities for innovation
     

Education and Experience

• Juris Doctorate (J.D.), from an accredited law school.
• Bachelor’s Degree in the engineering or physical sciences disciplines, especially materials science engineering, electrical engineering, mechanical engineering, or physics. Master’s degree a plus.
• 10+ years of relevant patent experience.  USPTO examiner experience a plus.
• Must be licensed to practice law in at least one U.S. state or the District of Columbia.
• Must be licensed to practice before the United States Patent Office.
• Experience with semiconductor process engineering a plus, particularly material deposition, etching, bonding, and other related areas.
• Patent prosecution - the ideal candidate will have experience in managing outside counsel in a cost-efficient manner.
• Contract Drafting – candidates should have experience drafting IP contract terms.
• Excellent relationship-building skills.
• Proficiency in effectively leveraging administrative staff and other resources to accomplish defined objectives.
• Collaborative team player with a positive mindset capable of influencing and inspiring teams throughout the organization.

Individual pay is determined based on multiple factors, including but not limited to location, experience, skills, job-related knowledge, relevant education, certifications, and/or training.  In addition to base salary, we offer (full time regular employees ) a comprehensive benefits package and for certain roles eligibility in our bonus plan and long-term incentives as applicable.  The talent advisor can share more details about total compensation for the role in your location during the hiring process.

Diversity creates an innovative culture. TEL US is an Equal Employment Opportunity / Affirmative Action employer and all qualified applicants will receive consideration for employment without regard to race, color, religion, sex, age, national origin, protected veteran status, disability status, sexual orientation, gender identity or expression, marital status, genetic information, or any other characteristic protected by law.