Patent Counsel - Wireless ommunication

JOB DESCRIPTION

Develops and prosecutes high-quality patents, and maximizes the utilization of the patent portfolio. Provides guidance on patent related issues to support IP department initiatives based on knowledge of laws, legal principles, and department policies. Manages and collaborates with outside counsel for strategic preparation and prosecution of patent assets. Collaborates with engineering and product teams to develop understanding of product roadmaps to identify and advise on potential areas for IP development. Performs comprehensive patent and legal analysis to drive decisions on patents. Strategically transform inventions into patent assets based on knowledge of products, technology, engineering principles, and business goals. Partners with engineers, outside counsel, support staff, and other business leaders to optimize work product.

This role requires full-time onsite work in our Hyderabad, Telangana office (5 days per week).

Qualifications:

Bachelor's degree in Electrical/Electronics Engineering, Computer Engineering, or related field.

Registered to practice before the Indian Patent and Trademark Office.

L.L.B from accredited law school.

3+ years of experience in patent preparation, prosecution, or litigation experience.

Preferred Qualifications:

Strong technical understanding in the field of Electrical/Electronics Engineering, Computer Engineering, or related field.

3+ years of experience in patent preparation and prosecution related to Wireless Communications (4G/5G/6G/WLAN/BT, etc.), System on Chip (SoC), processors (CPU, NPU, DSP, and/or GPU), Artificial Intelligence (AI), memory design, low power circuitry, multimedia or location technologies.

2+ years of engineering experience in software, electrical, communications, or related fields.

2+ years of managing a patent portfolio.

2+ years of experience in patent litigation.

Principal Duties and Responsibilities:

•   Develops patents and supports the patent portfolio based on knowledge of products, technology, and engineering principles.

•   Helps to identify areas or technologies related to one's portfolio that need more or less IP protection.

•   Maintains up-to-date awareness of domestic and foreign patent laws, rules, and best practices to prepare and prosecute patents.

•   Analyzes strategic importance of claims, assesses prior art, and develops arguments to present to patent offices.

•   Conducts patent analyses (e.g., infringement, validity) with minimal guidance to make recommendations around litigating, protecting, and/or licensing patents.

•   Provides advice and support on IP department initiatives and legal matters based on knowledge of laws, department policies, best practices, and legal risks.

•   Works with team to recommend decisions to appeal, and/or file divisional applications based on legal analysis.

•   Reviews work of support staff and outside counsel to ensure work product is aligned with strategies and plans.

•   Collaborates with engineering teams to collect, develop, and promote submission of inventions to support portfolio development.

•   Keeps leaders, team members, and stakeholders properly updated on the status of work assignments, seeking guidance when necessary.

•   Participates in and leads discussions, meetings, and portfolio and/or case reviews with colleagues to address requirements and understand implications of one's work.