IP Counsel or Agent

Job Summary

NetApp a multi-billion dollar technology leader and highly sought-after employer is adding an IP Counsel or Agent to join its award-winning legal department. The successful candidate will support the development of NetApps global patent portfolio. S/he will be responsible for conducting patent mining sessions supervising outside counsel during the patent prosecution process and harmonizing NetApps patent strategy with its business strategy.

This patent professional will work closely with NetApps engineering technical and business organizations as an integral partner throughout the research and development process. The ideal candidate will be comfortable engaging directly with engineers facilitating invention disclosure discussions identifying patentable innovations and influencing technical stakeholders on intellectual property strategy.

We are looking for a highly motivated tech-savvy patent counsel or agent with at least five years of patent prosecution and portfolio experience in software cloud computing hybrid cloud technologies AI-enabled technologies and enterprise technology solutions.

This is a hybrid position based in Morrisville NC RTP or Witchita KS.

Areas of Responsibility

• Conduct patent mining sessions with product engineering teams in an efficient manner.
• Provide recommendations to senior leadership about what inventions should be patented.
• Supervise outside counsel in all aspects of patent prosecution including drafting office actions and appeals.
• Build awareness and perform outreach about NetApps patent program among product engineering teams and educate them about the importance of intellectual property.
• Manage technology and systems for patent portfolio management including evaluating possible uses of AI tools.
• Partner directly with software cloud and engineering teams to identify evaluate and protect innovative technologies.
• Review patent claims and prosecution strategy to ensure appropriate quality breadth scope and alignment with NetApps business objectives.
• Manage and strategically develop patent portfolios while balancing business priorities innovation goals and intellectual property protection.

Qualifications

• Strong interest and ability to develop in-depth knowledge of NetApps wide range of data management solutions and obtain patent protection for new innovations.
• Registered and in good standing to practice before the U.S. Patent and Trademark Office.
• Experience as a registered Patent Agent or Patent Attorney is acceptable. A law degree is not required provided the candidate is qualified to practice before the USPTO.
• Preferred experience includes a combination of law firm patent prosecution experience and in-house patent portfolio management experience within the technology sector.
• Four years of experience prosecuting patents and managing patent portfolios for software cloud computing hybrid cloud technologies AI-enabled technologies and related enterprise technologies.
• Proficient in the use of AI and patent portfolio management tools.
• Management and copyright experience desirable.
• Ability to build credibility advocate and influence business and other teams.
• Demonstrated ability to communicate effectively with engineers and technical stakeholders and translate complex technologies into strong intellectual property strategies.
• Ability to prioritize and deliver multiple simultaneous projects under pressure.
• Strong collaboration skills across teams and organizations.
• Experience working with software cloud SaaS data management storage AI machine learning or related enterprise technology environments strongly preferred.
• Domestic and international travel may be required.