Counsel, IP
Counsel, IP
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Not Disclosed
Salary Not Disclosed
1 Vacancy
Job Description
Primary Function of Position
The Counsel IP attorney will be primarily responsible for managing and protecting the companys intellectual property assets in the medical robotics space including system hardware instruments and accessories. The role may require the attorney to both manage and perform direct work on many varied intellectual property and legal matters including patent trade secret licensing contract trademark trade dress and litigation matters. The attorney will interact daily with engineers engineering management and clinical specialists. The attorney will also manage outside lawyers and foreign associates and supervise their work products to ensure that company legal and intellectual property rights are maximized.
Essential Job Duties
- Counsel engineers and managers about how best to protect and exploit new company intellectual property.
- Evaluate the benefit of patent or trade secret protection for particular inventions.
- Evaluate the benefit of applying for United States and foreign patents in various markets to protect particular inventions.
- Drive invention identification meetings review invention disclosures for recommendations on IP actions and direct application drafting meetings
- Manage a substantial invention and international patent portfolio in designated technology areas including:
- Supervising the preparation and prosecution of United States and foreign patent applications to ensure inventions are properly protected.
- Ensuring patent applications are filed to meet legal department production goal deadlines by working with product managers inventors and outside lawyers.
- Review and edit patent applications and responses to patent office actions authored by outside lawyers both in the United States and in various foreign jurisdictions.
- Personally drafting patent applications and responses to patent office actions.
- Examine various patents and IP portfolios owned by third parties.
- Personally conduct and/or supervise outside lawyers patent searches.
- Advise engineers and engineering managers on the impact of patent claims on proposed and current development work.
- Assist intellectual property and business litigation matters.
- Draft and negotiate commercial contracts to cover a variety of commercial needs.
- Joint research and technical partnership agreements.
- Intellectual property licensing agreements.
- Other general commercial and intellectual property matters.
- Participate in and manage cross-functional projects and initiatives involving the Legal Team.
- Perform in-house IP analytics using patent literature databases advanced search and analysis software and other available resources to assess licensing partnering or acquisition opportunities.
- Allocate and deploy Legal resources appropriately to advance the interests of Intuitive in a cost-effective and timely manner.
Qualifications :
Required Skills and Experience
- Minimum of 6 years experience total directly drafting and prosecuting patent applications in the United States.
- Proven familiarity with the Patent Cooperation Treaty and Paris Convention.
- Experience working with non-U.S. counsels in various foreign jurisdictions.
- Excellent relational skills and willingness to work closely with various executives managers employees and employee teams.
- Exceptional writing drawing and oral communication skillsthis includes the ability to communicate in down-to-earth practical terms.
- Proven contract drafting experience including experience in general commercial matters joint development agreements and intellectual property matters.
- Ability to assess prioritize and manage multiple tasks within a rapidly changing environment in compliance with resource and bandwidth constraints.
- Exceptional decision-making skills to effectively resolve issues that involve different priorities and high-level goals.
- This role will require working onsite 3 days/week in our Sunnyvale CA office.
Required Education and Training
- Juris Doctorate
- Registration with United States Patent and Trademark Office
Preferred Skills and Experience
- Membership in the CA State Bar preferred.
- Proven academic background in engineering (robotics mechatronics mechanical engineering applied physics or biomedical engineering fields preferred); practical engineering experience is preferred.
- Patent experience in the medical device industry preferably with robotic or surgical products.
- Ability to visualize object relationships in three dimensions (i.e. an inherent comprehension of machine operation).
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Additional Information :
Due to the nature of our business and the role please note that Intuitive and/or your customer(s) may require that you show current proof of vaccination against certain diseases including COVID-19. Details can vary by role.
Intuitive is an Equal Opportunity Employer. We provide equal employment opportunities to all qualified applicants and employees and prohibit discrimination and harassment of any type without regard to race sex pregnancy sexual orientation gender identity national origin color age religion protected veteran or disability status genetic information or any other status protected under federal state or local applicable laws.
We will consider for employment qualified applicants with arrest and conviction records in accordance with fair chance laws.
We provide market-competitive compensation packages inclusive of base pay incentives benefits and equity. It would not be typical for someone to be hired at the top end of range for the role as actual pay will be determined based on several factors including experience skills and qualifications. The target salary ranges are listed.
Due to the nature of our business and the role please note that Intuitive and/or your customer(s) may require that you show current proof of vaccination against certain diseases including COVID-19. Details can vary by role.
Intuitive is an Equal Opportunity Employer. We provide equal employment opportunities to all qualified applicants and employees and prohibit discrimination and harassment of any type without regard to race sex pregnancy sexual orientation gender identity national origin color age religion protected veteran or disability status genetic information or any other status protected under federal state or local applicable laws.
Mandatory Notices
We will consider for employment qualified applicants with arrest and conviction records in accordance with fair chance laws.
Preference will be given to qualified candidates who do not reside or plan to reside in Alabama Arkansas Delaware Florida Indiana Iowa Louisiana Maryland Mississippi Missouri Oklahoma Pennsylvania South Carolina or Tennessee.
We provide market-competitive compensation packages inclusive of base pay incentives benefits and equity. It would not be typical for someone to be hired at the top end of range for the role as actual pay will be determined based on several factors including experience skills and qualifications. The target salary ranges are listed.
Remote Work :
No
Employment Type :
Full-time
Employment Type
Full-time
