Senior Counsel, Intellectual Property Counsel Jobs in California - 157157 | Submit Resume | General Counsel Consulting
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Deputy General Counsel
- Litigation and
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Energy Service Company

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Senior Counsel, Intellectual Property
Refer job# ERKL157157
Senior Counsel, Intellectual Property The candidate will be part of the intellectual property team helping to protect company innovations and build a patent portfolio across a variety of electric vehicle-related technologies, including batteries, charging, computer electronics and software, electric motors, infotainment, self-driving hardware and software, and vehicle mechanical systems, interiors, and bodies. Will include: Harvesting inventions, identifying patentable inventions, participating in deciding patentability of inventions under review, and managing the preparation and prosecution of U.S. and foreign patent applications to review, revise, and align patent applications with business and product development direction and goals. Working with engineering and business organizations to provide legal advice and align patent strategy with business goals. Prepare and present training materials to business stakeholders to bolster invention disclosure, trade secret protection, and intellectual property protection efforts. Develop and provide intellectual property risk assessment and mitigation strategies to business stakeholders by performing prior art searches, providing patent validity/invalidity opinions, and preparing infringement/non-infringement opinions. Negotiate, draft, and revise non-disclosure agreements, licensing agreements, engineering, design and development agreements, and intellectual property terms in various commercial agreements. Assist with intellectual property enforcement and dispute matters including patent litigation, trade secret litigation, and administrative proceedings at the USPTO. Perform intellectual property due diligence in support of strategic transactions, and mergers and acquisitions. Provide legal support for information security and data loss prevention efforts. Prepare and execute an intellectual property licensing monetization strategy.

Qualifications: JD Degree and B.S. Computer Science or Engineering. California Bar Preferred; USPTO registration required. 8+ Years Law Firm and In-House Experience combined (OEM In-House Preferred). Experience in preparing and prosecuting patent applications in vehicle technologies including ADAS, charging, computer electronics and software, infotainment, self-driving hardware and software. Experience with intellectual property transactions and agreements. Exceptional verbal and written communication skill are required. Be highly motivated with the ability to work independently, to take initiative to address problems, and to make continuous process improvements. Strong ability to work effectively in a team environment and the ability to install confidence in clients and peers; excellent interpersonal skills. Strong attention to detail and accuracy.

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