Overview
A technology-focused organization is seeking a Patent Attorney with a strong background in software patent prosecution and a relevant technical degree (computer science, electrical engineering, or computer engineering). This role involves working closely with legal and business teams to develop and manage a global patent portfolio and intellectual property (IP) strategy. The position requires expertise in identifying patentable inventions, securing patent assets, providing technical and legal analysis, handling patent challenges, and supporting IP-related transactions, licensing, mergers and acquisitions, and litigation.
Responsibilities
Portfolio Management & Strategic Advice
- Manage the lifecycle of the organization's IP assets, ensuring alignment with corporate development and business objectives.
- Develop and implement offensive and defensive IP strategies to maintain competitive advantage in the identity and technology market.
- Advise on IP-related business risks and emerging legal trends.
- Communicate complex IP concepts in business terms to non-legal stakeholders.
- Refine company-wide IP policies, including invention disclosure programs and patent incentive schemes.
Patent
- Collaborate with engineering and product teams to identify patentable inventions and enhance patent literacy.
- Work with outside counsel on drafting and prosecuting high-quality patent applications.
- Maintain knowledge of the industry patent landscape to guide strategy and patent drafting.
- Continuously refine patent strategy to protect core technologies and future innovations.
Other Intellectual Property Issues
- Provide advice on trade secret strategy and assist in policy implementation.
- Guide software copyright protection and management of open source software usage and copyright claims.
- Support trademark registration and enforcement to protect company brands.
- Advise on legal issues related to API integrations, digital content, professional services, and developer agreements.
- Draft, review, and negotiate IP-related provisions in master service agreements, joint development agreements, vendor contracts, and licensing agreements.
- Conduct IP due diligence for acquisitions and prepare related closing documents and transition service agreements.
Compliance and Policy
- Assist with IP-related compliance and industry standards relevant to SaaS and cybersecurity.
- Deliver training on IP best practices and confidentiality to employees.
Litigation
- Support all phases of IP litigation as needed.
Qualifications
- Juris Doctor (J.D.) degree from an accredited law school with active Bar membership.
- Registered Patent Attorney with the United States Patent and Trademark Office (USPTO).
- Undergraduate or graduate degree in computer science, electrical engineering, computer engineering, or a related technical field.
- Minimum of 5 years of intellectual property experience, including software patent prosecution.
- Experience with SaaS, cloud-based software, or related technologies.
- Ability to work independently and collaboratively in a fast-paced environment.
- Strong analytical skills balanced with practical business judgment.
- Flexibility, team orientation, and a sense of humor.
Compensation & Benefits
- Annual base salary range for candidates located in California (excluding San Francisco Bay Area), Colorado, Illinois, New York, and Washington: $180,000 to $248,000 USD.
- Additional compensation may include equity (where applicable), bonuses, and benefits such as health, dental, and vision insurance, 401(k), flexible spending accounts, and paid leave including parental leave.
Location
- Candidates located in California (excluding San Francisco Bay Area), Colorado, Illinois, New York, and Washington are eligible for the specified salary range.
Equal Opportunity
The organization is an Equal Opportunity Employer and considers all qualified applicants without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, ancestry, marital status, age, physical or mental disability, veteran status, or other protected categories. Reasonable accommodations are available upon request during the application and hiring process.