Description:

It's fun to work in a company where people truly Believe in what they're doing!

Summary:
Job Overview:
The Senior IP Counsel is a strategic and cross-functional role. As such, the successful candidate will provide intellectual property (IP) analyses, advice, and other support services to in-house clients across multiple functions at A Privately Held Software Development Firm.

Essential Duties and Responsibilities:

Principal duties include structuring, drafting and negotiating incoming and outgoing technology licenses, strategically maintaining A Privately Held Software Development Firm's IP portfolio, ensuring compliance with third party and open source software (OSS) licenses by reviewing Source Code Analysis (SCA) results, and determining proper export classification and licensing based on the encryption functionality of products. In addition, the Senior IP Counsel shall project manage and assist in initiatives and workstreams related to creating or improving processes, compliance programs, and policies.

Maintain A Privately Held Software Development Firm's IP portfolio of patents, trademarks, copyrights, and trade secrets.
Review Source Code Analysis (SCA) results for proper licensing of third party proprietary and open source software (OSS).
Review the use of encryption in A Privately Held Software Development Firm software and ensure compliance with associated export classification requirements.
Advise colleagues on, help negotiate, and draft software license agreements.
Manage IP outside counsel and process, including reviewing and revising applications and Office Action responses, working closely with inventors to identify and protect inventions, and working closely with marketing and product teams for appropriate trademark protection.
Oversee the process for escrow of A Privately Held Software Development Firm software.
Support compliance activities regarding export controls.
Advise colleagues on proposed changes to the IP portfolio.
Advise colleagues on IP matters in proposed acquisitions of assets or companies.
Advise colleagues on IP matters in strategic technology partnerships.
Advise colleagues on IP matters in product development and marketing.

Qualifications:

Excellent academic credentials, law degree.
Must be in good standing with at least one State Bar.
Registered to practice before the U.S. Patent and Trademark Office, or strong technical background.
Minimum of 5 years of experience in law firms and/or in-house legal positions practicing intellectual property law.
Experience in software and/or other high technology industries.
Experience with AI and related legal considerations.
Experience with technology sales, licensing and procurement transactions and related distributor, reseller, cloud computing, and software product and services agreements.
Demonstrated ability to draft, review and negotiate complex IT contracts.
Knowledge of and experience with pertinent laws, including software licensing, data protection, and export control laws.
Ability to clearly articulate and defend risk analysis; critically examine business practices to ensure they are aligned with legal requirements; provide advice regarding business practice risk.
Successful candidate is a proven team player and consensus builder that takes a business approach to law.
Successful candidate is a flexible self-starter and proactive problem solver who can work autonomously and handle significant client contact.
Effective written and oral communication skills are essential. Ability to clearly present information, in writing and orally, respond to questions from executives, managers, customers, and other employees, with focus on client service.
Diplomatic, approachable and possessing good business and personal judgment.
Must manage conflicting demands from multiple business clients in a fast-paced environment.
Excellent organizational skills; ability to manage multiple projects at once, follow through and meet deadlines.
Inherent ability to act with the highest integrity and professionalism.