Description:
The Intellectual Property Counsel is responsible for assisting the Senior Intellectual Property Counsel in identifying, evaluating, and protecting patentable and strategic inventions and minimizing the risk that the Company's products infringe on the valid intellectual property rights of others. This position will also collaborate with the Product Development team and other in-house and outside attorneys to review, draft, and coordinate patent applications, patent prosecutions, intellectual property documentation, and related agreements.
- Assist the Senior Intellectual Property Counsel on researching existing patents and providing guidance during the design process when developing new products.
- Work closely with engineers to identify patentable technology, suggest courses of action to best protect proprietary technology, and help drive the process for new patent applications.
- Prepare and prosecute U.S. patent applications, and as needed, work with outside counsel and foreign associates for preparation and prosecution of international patent applications.
- Assist with the analysis of patent office actions, gather relevant data and information, and draft responses to those actions to obtain allowance of claims.
- Conduct prior art searches and invalidity searches.
- Provide legal advice on patentability of inventions, validity of patents, and patent infringement.
- Assist in managing patent docket, completing docket reviews, and providing recommendations regarding patent maintenance and foreign filing decisions.
- Track intellectual property related projects and manage timelines as appropriate. Keep leadership informed of progress.
- Perform other duties as required within the nature and level of work.
Qualifications:
- Juris Doctor (JD) from an accredited Law School and Bachelor's degree in Engineering degree are required.
- Two (2) years of applicable intellectual property legal experience at an outside firm or as in-house counsel and one (1) year of previous experience as a Mechanical Engineer are required.
- Must be registered to practice before the United States Patent Office and a member of the Texas State Bar in good standing or qualified to obtain Admission on Motion pursuant to Texas Supreme Court Rule 705 or Limited Admission of House Counsel pursuant to Texas Supreme Court rule 716.
- Strong written and verbal communication skills. Service-oriented focus with ability to work as part of cross-functional teams and drive results. Highest integrity, excellent judgment, and the ability to pro-actively recognize and effectively communicate legal issues to engineers and management.
