Description:

Job Description:
Cricut is looking for an experienced patent attorney to serve as Patent Counsel, owning and building the company's patent program with direct oversight from the General Counsel. The ideal candidate is a hands-on practitioner who is passionate about patent prosecution, thrives with autonomy, and wants to make an immediate impact at a company whose products are used by millions of makers worldwide.

The Patent Counsel will play a key role in developing, maintaining, and executing Cricut's patent strategy across the full patent lifecycle, including invention harvesting, patent preparation and prosecution, freedom-to-operate analysis, clearance and risk assessment, strategic portfolio development, competitive intelligence, and patent enforcement activities in the United States and internationally.

The candidate will have the responsibility of supporting the IP needs of the business, including drafting, negotiating, interpreting and advising Cricut on IP related agreements, such as non-disclosure agreements and license agreements, and IP provisions in commercial agreements, such as manufacturing, supply, development, and strategic partner agreements. The candidate will also counsel business and product teams regarding patent risk, freedom-to-operate considerations, competitive patent landscapes, and strategic intellectual property decision-making.

The Patent Counsel will:
  • prepare, file, and prosecute U.S. and foreign patent applications and manage all stages of the patent lifecycle from invention disclosure through issuance and post-grant activities;
  • assist in identifying, collecting, evaluating, and preparing invention disclosure records and develop strong partnerships with engineering, product, and business teams to cultivate innovation;
  • attend product development meetings and monitor product development efforts while serving as a strategic advisor on patentability, competitive patent risks, and intellectual property opportunities;
  • serve as the primary coordinator and gatekeeper for patent searches, patent filings, portfolio development, continuation strategy, design-around efforts, and competitive blocking strategies;
  • conduct and manage patent clearance investigations, freedom-to-operate analyses, validity assessments, and infringement evaluations in support of product launches and strategic business initiatives;
  • develop prosecution strategies that are responsive to evolving marketplace conditions, competitor activity, enforcement risks, and product roadmaps;
  • monitor competitor patent portfolios, industry developments, and emerging technologies to provide actionable business and intellectual property guidance;
  • assist in managing patent disputes, licensing matters, pre-litigation activities, administrative proceedings, and patent enforcement efforts in the United States and foreign jurisdictions;
  • coordinate with and manage outside counsel, search firms, and foreign associates regarding patent prosecution, clearance analyses, litigation support, enforcement actions, and other intellectual property matters;
  • respond to inquiries and collect information and documents needed by outside counsel to conduct searches, analyses, investigations, and enforcement activities.

Qualifications:
  • JD degree from an ABA approved law school;
  • 5+ years of patent prosecution experience, including substantial experience drafting patent applications across mechanical, electrical, and/or software technologies;
  • experience in preparation and prosecution of patent applications is a basic requirement;
  • experience conducting and/or managing freedom-to-operate analyses and patent clearance investigations
  • experience with counseling clients on business aspects of IP matters;
  • state bar membership;
  • registration to practice before the USPTO (patent bar admission) is required

Preferred Qualifications:
  • experience advising product development teams regarding patent risk mitigation and design-around strategies;
  • experience managing foreign patent prosecution and coordinating with international counsel;
  • experience supporting patent licensing, enforcement, litigation, or other contentious intellectual property matters;