Overview
A legal and compliance team within a dynamic technology and real estate organization is seeking a Counsel, Intellectual Property to serve as the primary in-house patent counsel. This role focuses on patent strategy, portfolio management, open-source governance, and IP-related counseling, particularly in a fast-moving product and service environment.
Responsibilities
- Lead patent strategy and manage the patent portfolio, including identifying patentable inventions aligned with business priorities.
- Support competitive and portfolio analyses such as defensive publications, trade secret versus patent decisions, and portfolio pruning.
- Guide inventors through the patent disclosure process and provide clear recommendations on filing, continuation, and abandonment decisions.
- Manage outside patent counsel to ensure quality, consistency, and cost-effective patent drafting and prosecution.
- Oversee core patent operations including docketing, maintenance, annuities, and improvements to patent intake workflows, tools, and templates.
- Develop and contribute to patent education, communications, and self-service resources to improve patent literacy across engineering, product, and design teams.
- Serve as a primary contact for open-source license questions related to use, contribution, and distribution in products and internal tooling.
- Maintain and operationalize open-source policies, playbooks, and intake processes in collaboration with engineering, security, and compliance teams.
- Provide product-facing counseling on AI-enabled features, including data, IP, and model-use considerations, and translate evolving AI and IP rules into practical guidance for product and engineering stakeholders (for candidates with relevant experience).
Requirements
- Minimum of 4 years of intellectual property practice experience, including significant in-house counsel experience at a technology, software, platform, or similar company.
- Substantial hands-on experience with patent drafting, prosecution, and portfolio management for software and/or AI-related inventions.
- Demonstrated experience leading a patent portfolio, including strategy, filings, maintenance, pruning, and counseling on patent versus trade secret decisions.
- Working knowledge of open-source licensing and practical experience counseling engineering teams on compliant use, contribution, and distribution.
- Strong communication skills, comfortable working with both technical and non-technical partners, including senior stakeholders.
- Business-oriented and collaborative with sound judgment, able to calibrate risk and provide practical recommendations.
- Detail-oriented, proactive, and capable of managing multiple matters simultaneously; seeks opportunities to improve processes and tools, including thoughtful use of AI.
- Experience advising on AI or ML product implementations is a strong plus.
- J.D. with active state bar admission or eligibility for in-house registration; USPTO registration is a plus but not required.
Compensation & Benefits
- This is a remote position with employees able to work from any U.S. state, subject to certain exceptions.
- Base salary ranges vary by location:
- California, Connecticut, Maryland, Massachusetts, New Jersey, New York, Washington state, and Washington DC: $136,300 - $217,700 annually.
- Colorado, Hawaii, Illinois, Minnesota, Nevada, Ohio, Rhode Island, and Vermont: $129,500 - $206,900 annually.
- Eligible for equity awards based on experience, performance, and location.
- Compensation will not fall below the salary threshold for exempt employees in the employee's state of residence.
Location
- Remote within the United States, with the employee's physical work location to be identified and approved.
Equal Opportunity
The organization is committed to equal employment opportunity regardless of race, color, ancestry, religion, sex, national origin, sexual orientation, age, citizenship, marital status, disability, gender identity, or veteran status. Accommodations are available for applicants with disabilities or special needs upon request. Qualified applicants with arrest or conviction records will be considered in accordance with applicable laws.