Job Overview:
The IP Counsel manages the IP portfolio and provides support to the commercial business units and other functional teams as required.

Duties and Responsibilities:
Actively lead drafting of disclosures and applications. Evaluate inventions to determine patentability. Respond to office actions. Develop and conduct relevant trainings, processes and procedures. Lead monthly Patent Review Board meetings. Manage filing and prosecuting patent applications before the USPTO and foreign counterparts. Draft and negotiate joint development agreements, IP licensing agreements and IP provisions in commercial agreements including manufacturing and supply agreements.

Must be a practical, solutions-oriented business partner. Must be able to distill complex technical and legal concepts into plain English. Effectively recognize and analyze compliance and legal risks and work with team members, customers and regulators as required to find timely and cost-effective solutions. Ensure the continuous improvement of legal operational practices and timelines. Other duties as assigned.

Formal Education, Certifications or Equivalent
  • 6-8 years' total experience – a combination of both law firm and in-house corporate legal department experience preferred.
  • Admitted to practice in California.
  • Patent bar preferred.
  • Hybrid role in the Bay Area with office in Newark, CA.

Work Experience:
6+ years total experience – a combination of both law firm and in-house corporate legal department experience preferred.

  • Fosters Diversity and Inclusion – has the ability to address, promote and advocate a sense of belonging for all people.
  • Courage to Act - by stepping up to address difficult issues, saying what needs to be said.
  • Communicates Effectively - by speaking clearly and expressing him, herself or themselves well in groups; conveys information in a clear and concise manner; conveys information in a manner which different audiences can understand.
  • Business Insight - applying knowledge of business and the marketplace to advance the company's goals.
  • Personal Responsibility - for the quality and timeliness of work
  • Grit - applying him or herself conscientiously with thought and agility, resilient in the face of adversity and has a passion for the job.
  • Critical Thinking - addressing matters through thoughtful observation, systematic analysis drawing logical conclusions to solve problems.
  • Understands Priorities - ability to organizing tasks and managing time based on importance.
  • Finance Acumen - holds a comprehensive understanding of the drivers of growth, profitability, and cash flow; financial statements, key performance measures with an understanding of the implications of decision making on value creation.
  • Ethics - has a strong professional, business, and work ethic.
  • Influences Others - the ability to persuade others to accept a desired point of view; gains support and commitment form others; effects change in others behavior.
  • Facilitation - ability to create an environment of openness and trust; leads her team, to decisions in which all team members feel a sense of ownership; leads a meeting or group effort with peers or peer groups without directing the results/outcome.
  • Decision Making - the ability to make timely and effective decisions; escalates decisions only if unable to make decision effectively; owns decision when executed; collaborates as required.
  • Effective Conflict Management - Identifies sources of conflict; uses conflict as a constructive means to exchange ideas; keeps energy focused on desired outcomes.
  • Problem Solving - the ability to use effectively use available resources to finding solutions to difficult or complex issues.
  • Builds Effective Partnerships - by developing networks and building alliances, engages in cross-functional activities; and utilizes contacts to build and strengthen internal support bases.

Reporting Relationships:
Reports To: Chief Legal Officer

Direct Reports: None

Interfaces With: Worldwide Sales and Business Development team and other departments as needed