Legal Counsel, Intellectual Property

Rivaz is seeking an in-house Legal Counsel, Intellectual Property to support the intellectual property needs of Rivaz and its subsidiaries. This role will manage internal IP processes, work closely with engineering and business teams, and coordinate with outside patent and trademark counsel.

The ideal candidate has experience supporting patent prosecution and managing IP portfolios involving batteries, electrochemistry or advanced materials. This position will also support IP transactions, international filings, trademark matters and IP enforcement activities.

• Work with engineers and technical teams to identify potentially patentable inventions and develop invention disclosures.
• Coordinate patent drafting and prosecution activities between internal inventors and outside patent counsel.
• Review patent application drafts, office action responses and related work product for technical accuracy, commercial alignment and completeness.
• Conduct preliminary patentability, prior art and competitive landscape searches.
• Assist with preliminary freedom-to-operate and infringement issue spotting and coordinate formal analyses with outside counsel.
• Support patent filing decisions based on technical significance, commercial value, competitive considerations and expected cost.
• Manage domestic and international patent portfolios, including PCT and national-stage filings, prosecution status, deadlines, maintenance fees and portfolio records.

• Conduct preliminary trademark clearance searches.
• Coordinate domestic and international trademark applications, renewals and portfolio maintenance.
• Review filings and other work product prepared by outside trademark counsel.
• Support trademark oppositions, enforcement matters, domain name issues and brand protection activities.

• Develop and maintain invention disclosure, patent review and IP portfolio management processes.
• Maintain accurate IP databases, docketing records and management reports.
• Manage outside IP counsel, including communication, budgets, billing and performance.

• Conduct preliminary factual and legal analysis of third-party infringement allegations and other IP claims.
• Coordinate responses to cease-and-desist letters and infringement notices with internal stakeholders and outside counsel.
• Identify potential third-party infringement of Rivaz IP and support enforcement activities.
• Assist with document preservation, technical investigations and management of outside counsel in IP disputes.
• Support the development of trade secret, confidential information and open-source software practices.
• Monitor relevant competitor filings and developments in battery and related technologies.

• Support the General Counsel and Legal Counsel, Corporate & Transactions on IP acquisitions, assignments, licenses, joint development arrangements and other technology-related transactions.
• Assist with IP due diligence in investments, acquisitions, financings, corporate reorganizations and strategic partnerships.
• Review IP ownership, licensing, confidentiality and invention-assignment provisions in commercial, employment, consulting, vendor and development agreements.

• Juris Doctor from an accredited law school.
• Active membership in good standing in at least one U.S. jurisdiction and eligibility to practice as in-house counsel in California.
• Approximately 3 to 5 years of relevant intellectual property experience at a law firm, in-house legal department or both.
• Substantive experience supporting patent prosecution, reviewing patent applications and working with inventors and outside patent counsel.
• Experience managing multiple IP matters, deadlines and external service providers.
• Professional working proficiency in Mandarin Chinese is required for this position.

• Technical education or substantial professional experience in battery technology, electrochemistry, chemistry, chemical engineering, materials science or a related field.
• Experience managing international patent and trademark portfolios.
• Experience with IP licensing, technology transactions, joint development arrangements or IP due diligence.
• Registration to practice before the U.S. Patent and Trademark Office.
• Experience involving automotive engineering, commercial vehicles, mining, mineral processing and metallurgy.

The anticipated annual…