Reporting to the General Counsel, the Patent Counsel will have key responsibility for working with the research and development, and marketing departments to:
a) identify signals, both inside and outside the company, that could indicate intellectual property threats to the continued success, or opportunities to grow the business and increase market share of, NextEV’s target market segments of automotive generally, and telematics more particularly.
b) ensure that NextEV’s IP portfolio contains the tools necessary to protect NextEV’s market differentiators. This position will ensure action and resource requirements are properly aligned to allow for those goals to be met.
Position Duties and Responsibilities:
• Understand NextEV’s patent portfolio and how it relates to the portfolios of NextEV competitors, customers, and suppliers
• Understand NextEV’s product portfolio and how it compares with competitor product portfolios
• Help lead technical IP strategy/landscaping for NextEV projects and business interests, in close collaboration with R&D and Marketing; coordinate and communicate decisions regarding patent applications, patent issuances, and patent maintenance payments, including foreign filing strategies and the use of divisionals, continuations, and CIPs
• Understand and monitor NextEV’s competitors’ IP in close collaboration with the Competitive Intelligence Department; support knowledge management and competitive intelligence for innovation activities within NextEV
• Participate in implementing a long-term strategy to optimize NextEV’s IP Portfolio including: patents, trademarks, trade secrets and publications
• Work with NextEV’s internal R&D department to optimize the effectiveness of NextEV’s issued patents and pending patent applications
• Work with NextEV business leaders on decisions to defend NextEV, or to challenge others’ IP
• Work with Marketing team to identify commercialization opportunities and define potential licensing opportunities from IP portfolio
• Build an external network – including tech scouting, IP search companies and domain experts
• Identify and help assess potential acquisitions from an IP perspective
• Collaborate with Marketing on brand strategy, and protect trademarks resulting from collaboration
• Periodically report on the status of NextEV’s portfolio, current threats to its IP, and strategies for addressing those threats
• Minimum BS in a related discipline including: Physics, Electrical Engineering, Software Engineering, or related discipline
• Minimum JD, member of the patent bar, any state bar in good standing, and eligible to become registered member of the California bar
• Minimum 7-10 years substantive legal experience with relevant patent / intellectual property experience
• Excellent communication skills – both written and verbal
• Willingness and ability to take direction, and learn
• Enthusiasm for the goals and vision of the company
• Ability to work in a team environment, creatively problem-solve, adapt to continually evolving atmosphere
Additional Desired Qualifications:
• M.S. or Ph.D. in a Scientific Field (Physics, Engineering)
• Proven track record working with trademarks and software licensing
• Proven track record working with technology teams and companies
This position requires international travel. All applicants must be a US citizen or hold/be eligible to obtain a work visa and hold a valid passport.
This job has been filled or removed by NextEV.
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