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Patent Counsel, Assoc.

Practice Areas: Patent Preparation, Patent Prosecution, Litigation Job #: 3019224 Exp.: 2+ Years
Job Overview:
Qualcomm is a company of inventors that unlocked 5G ushering in an age of rapid acceleration in connectivity and new possibilities that will transform industries, create jobs, and enrich lives. But this is just the beginning. It takes inventive minds with diverse skills, backgrounds, and cultures to transform 5Gs potential into world-changing technologies and products. This is the Invention Age - and this is where you come in.

General Summary:
Develops, prosecutes, and manages high-quality patents, and maximizes the utilization of the patent portfolio. Manages dockets and provides guidance on patent related issues to support IP department initiatives based on knowledge of laws, legal principles, and department policies. Performs comprehensive patent and legal analysis to drive decisions on patents. Strategically transforms inventions into patent assets based on knowledge of products, technology, engineering principles, and business goals. Partners with engineers, outside counsel, support staff, and other business leaders to align on strategies to optimize work product.

The responsibilities of this role include:
  • Works independently with little supervision.
  • Provides some supervision/guidance to other members; does not have direct reports.
  • Decisions are more significant in their impact, influencing overall program or project success, finances, and/or the ability to meet objectives. Errors are not readily apparent due to the complexity of work process/product or time between decisions and results. Errors typically result in significant expenditure of time, resources, and funds to correct.
  • Requires verbal and written communication skills to convey complex and/or detailed information to multiple individuals/audiences with differing knowledge levels. Role may require strong negotiation and influence, communication to large groups or high-level constituents.
  • Works within the prescribed budgetary objectives of the department. Erroneous decisions, failure to achieve results may cause delays in schedules and result in the re-allocation of some resources.
  • Has a moderate amount of influence over key organizational decisions (e.g., is consulted by senior leadership to make key decisions).
  • Most tasks require multiple steps which can be performed in various orders; tasks require simultaneously executing multiple cognitive abilities and maintaining information in short or long-term memory while performing the task.
  • Creativity is needed to draft original documents, imagery, or work products within established guidelines.
  • Works on abstract problems in variable situations that typically require complex analysis, interpretation, or evaluation of intangible factors. Directs the resolution of complex problems that have impact beyond own area. Participates in corporate development of methods, techniques, and evaluation criteria for projects, programs, and people.
  • Occasionally participates in strategic planning within own area affecting immediate operations.

Principal Duties and Responsibilities:
  • Develops patents and supports the patent portfolio based on knowledge of products, technology, and engineering principles related to one's portfolio.
  • Helps to identify areas or technologies related to one's portfolio that need more or less IP protection.
  • Maintains up-to-date awareness of domestic and foreign patent laws, rules, and best practices to prepare and prosecute patents worldwide.
  • Analyzes strategic importance of claims, assesses prior art, and develops arguments to present to patent offices.
  • Conducts patent analyses (e.g., infringement, validity) with minimal guidance to make recommendations around litigating, protecting, and/or licensing patents.
  • Develops claim chart analyses that account for all patent related information to support licensing and enforcement activities.
  • Provides advice and support on IP department initiatives and legal matters based on knowledge of laws, department policies, best practices, and legal risks.
  • Works with team to recommend decisions to appeal, continue prosecution, and/or file continuation/divisional applications based on legal analysis.
  • Reviews work of support staff and outside counsel to ensure work product is aligned with strategies and plans.
  • Manages dockets, cases, and/or initiatives by planning resources (e.g., staff, time, tools), aligning on expectations for work product and deliverables, and tracking progress against milestones.
  • Collaborates with engineering teams to collect, develop, and promote submission of IDFs to support portfolio development.
  • Keeps leaders, team members, and stakeholders properly updated on the status of work assignments, seeking guidance when necessary.
  • Participates in discussions, meetings, and portfolio and/or case reviews with colleagues to address requirements and understand implications of one's work.

Physical Requirements:
  • Monitors and utilizes computers and test equipment for more than 6 hours a day.
  • Continuous communication which includes the comprehension of information with colleagues, customers, and vendors both in person and remotely.

Minimum Qualifications:
  • Bachelors - Computer Engineering, Bachelors - Electrical Engineering, Bachelors - Mechanical Engineering, Juris Doctorate - from ABA approved law school
  • Work Experiences:
  • 2+ years experience in patent preparation, prosecution, or litigation experience, Patent Attorneys working in the US must be registered at the United States Patent and Trademark Office. Patent Attorneys working in India must be registered with the India patent office. Patent Attorneys working in China must be qualified as a China patent agent. Patent Attorneys working in Europe must have passed the EQE., US: Admitted to a state bar in good standing.

Preferred Qualifications:
  • Doctorate - Computer Engineering, Doctorate - Electrical Engineering, Doctorate - Mechanical Engineering, Masters - Computer Engineering, Masters - Electrical Engineering, Masters - Mechanical Engineering
  • Work Experiences:
  • 2+ years managing a portfolio, including budgets. ,2+ years experience in patent preparation and prosecution in software, electrical, communications, or related fields. ,2+ years engineering experience in software, electrical, communications, or related fields. ,3+ years experience in patent preparation and prosecution. ,5+ years patent law experience at a law firm or in-house. ,Non-US: Passed bar for the country in which they practice.

Applicants: If you are an individual with a disability and need an accommodation during the application/hiring process, please call Qualcomm’s toll-free number found here for assistance. Qualcomm will provide reasonable accommodations, upon request, to support individuals with disabilities to be able participate in the hiring process. Qualcomm is also committed to making our workplace accessible for individuals with disabilities. Qualcomm is an equal opportunity employer and supports workforce diversity.

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