Patent Counsel, Attorney

Company:

Qualcomm Incorporated

Legal Group, Legal Group >
Patent Counsel

Develops, prosecutes, and manages high-quality patents, and maximizes the utilization of the patent portfolio. Manages a patent portfolio and 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 across multiple jurisdictions 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.

• Bachelor's degree in Electrical Engineering, Computer Engineering, Mechanical Engineering, or related field.
• Juris Doctorate from ABA accredited law school.
• US:
  Admitted to a state bar in good standing.
• 2+ years of experience in patent preparation, prosecution, or litigation experience.
• Appropriately registered/licensed in candidate’s applicable jurisdiction.

• Bachelor's degree in Electrical Engineering, Computer Engineering, Mechanical Engineering, or related field.
• Juris Doctorate from ABA accredited law school.
• Admitted to a state bar in good standing and registered to practice before the United States Patent and Trademark Office. Applicants must be willing to register as in-house counsel with the California state bar if not already a member of the California state bar.
• 3+ years of experience in patent preparation, prosecution, or litigation experience.

• Master's degree or PhD in Electrical Engineering, Computer Engineering, Mechanical Engineering, or related field.
• 5+ years of patent law experience at a law firm or in-house.
• 3+ years of experience in patent preparation and prosecution related to System on Chip (SoC), processors (CPU, NPU, DSP, and/or GPU), Artificial Intelligence (AI), memory design, low power circuitry, or location technologies.
• 2+ years of engineering experience in software, electrical, communications, or related fields.
• 2+ years of managing a patent portfolio, including budgets.
• 2+ years of experience in patent litigation.

• Develops patents and supports the patent portfolio based on knowledge of products, technology, and engineering principles related to one's portfolio.
• 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 worldwide.
• 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.
• Develops claim chart analyses that account for all patent related information to support licensing and enforcement activities.
• 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, continue prosecution, and/or file continuation/divisional applications based on legal analysis.
• Reviews work of support staff and outside counsel to ensure work product is aligned with strategies and plans.
• Manages dockets, cases, and/or initiatives by planning resources (e.g., staff, time, tools), aligning on expectations for work product and deliverables, and tracking progress against milestones.
• 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…