Intuitive Surgical, a large corporation, is seeking a Patent and Trademark Attorney to work in Sunnyvale, CA.
The Patent and Trademark Attorney will be primarily responsible for managing the company's trademark assets but will also perform some amount of patent-related work. The role may require the attorney to both manage and perform direct work on many varied intellectual property and legal matters, including patent, trademark, trade secret, licensing, contract, and litigation matters. The attorney will interact daily with engineers, engineering management, clinical specialists, and marketing/branding personnel. The attorney will also manage both in-house and outside lawyers and supervise their work products to ensure that company legal and intellectual property rights are maximized.
Roles and Responsibilities:
- Counsel engineers and managers about how best to protect and exploit new company intellectual property.
- Evaluate benefit of patent or trade secret protection for various particular inventions.
- Evaluate benefit of applying for United States and foreign patents in various markets to protect particular inventions.
- Supervise preparation and prosecution of United States and foreign trademark and patent applications to ensure marks and inventions are properly protected.
- Ensure trademark and patent applications are filed to meet legal department production goal deadlines by working with product managers, marketing/branding personnel, inventors, and outside lawyers.
- Edit patent applications and responses to patent office actions authored by outside lawyers, both in the United States and in various foreign jurisdictions.
- Personally author patent applications and responses to patent office actions.
Analyze various patents and patent portfolios owned by others.
- 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.
- Support intellectual property and business litigation matters.
- Counsel engineers, managers, and business units regarding trademark, patent, and trade secret matters.
- Provide advice on trademark law and brand protection.
- Perform clearance analysis on all potential trademarks, and support resolution of trademark disputes, including consent and coexistence agreements.
- Manage US and foreign trademark prosecution and maintenance.
- Track and coordinate domain name registrations and maintenance.
- Work with relevant business functions to ensure appropriate use of trademarks.
- Actively seek out and identify patentable subject matter.
- Work with engineers and engineering managers to ensure that inventions are protected using the appropriate intellectual property protection scheme.
- Draft and negotiate commercial contracts to cover a variety of commercial needs.
- Joint research and technical collaboration agreements.
- Intellectual property licensing agreements.
- Other general commercial and intellectual property matters.
- Mentor and train less senior legal team members.
- Participate in and lead 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-effectively and timely manner.
- Juris Doctorate
- Membership in the CA State Bar, preferred
- Registration with United States Patent and Trademark Office
- Minimum of 5 years experience total in patent and trademark application preparation and prosecution in the United States, under the Patent Cooperation
- Treaty and/or Madrid Protocol, and working with non-U.S. counsels in various foreign jurisdictions, preferably with at least two years experience in each of patent and trademark practice
In addition, in order to effectively perform the responsibilities of this position, the following skills are preferred:
- Eligibility for Membership in the California State Bar
- Strong academic background in engineering (mechanical or electrical preferred); practical engineering experience is preferred
- Patent experience in medical device industry, preferably with surgical products
- Ability to visualize object relationships in three dimensions (i.e., an intuitive understanding of machine operation)
- Strong interpersonal skills and be willing to work closely with various executives, managers, employees, and employee teams
- Strong writing, drawing, and oral communication skills—this includes the ability to communicate in down-to-earth, practical terms
- Strong 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.
- Strong decision-making skill to effectively resolve issues that involve competing priorities and high-level objectives
Employer Type: Large Corporation
Job Location: Sunnyvale, CA