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Job Description
The Patent Counsel carries out complex legal assignments of preparing, filing and following-up patent applications relating to leading-edge technologies emerging from Horizon Semiconductors, requiring substantive legal knowledge in IP law as well as extensive engineering background.
Perform patent search, drafts patent applications, communicates and negotiates with patent examiners, follows-up patent application from a concept to a granted patent, guides company engineers and managers in all aspects and respects of IP. Develop and maintain trademarks, copyrights and intellectual property aspects of contracts and agreements, and review of engineering documents for intellectual property issues. Evaluate the scope, validity or potential infringement aspects of third party patents. Conduct due diligence of intellectual property assets of third parties. Provide legal advice concerning patent viability, the advisability of filing patent applications, domestic and foreign patent strategies, and other general legal advice as necessary. The position will involve litigation, transactional, policy and operational issues.
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Responsibilities
The attorney will report to the General Counsel in our Israeli office and be responsible for a broad range of technology transactions and operational issues, and for counseling management and employees on a wide variety of IP related issues. The chosen candidate will have varied responsibilities including:
• Preparation of US and other patent applications, from a concept of innovation to filing;
• Supervision of outside counsel preparation and prosecution;
• Infringement and clearance analysis;
• Patent search
• Participation in design around and analysis;
• Advise inventors and management on a variety of issues from Open Source, Copyright, etc.;
• Attend and participate in patent application/claim drafting meetings;
• Interpretation of agreements and licenses;
• Management of patent portfolio, and review of scientific and commercial publications. Trademark, opinion work, review of IP issues in conjunction with transactions, preparation and review of IP and non-IP agreements;
• Assisting in development and implementation of state-of-the-art compliance programs and improved systems and policies;
• Assisting in the identification, investigation and remediation of any corporate compliance issues.
Requirements
4 to 5 years of technology and IP experience as an attorney at either a top tier law firm or at a technology company. This position requires a breadth of knowledge and ability to identify and handle issues in many disciplines, with particular expertise in patent and IP related matters and commercial law. Substantial hands-on experience with technology transactions and the related issues is a prerequisite. Ability to perform sophisticated legal & technical analysis, strong technical writing skills and superior judgment required. Strong negotiation and drafting skills. In addition, the candidate must have:
1. The ability to apply fundamental and diversified professional engineering concepts, theories and practices to achieve objectives with versatility, judgment, and perception;
2. The ability to adapt and apply methods and techniques of related scientific disciplines;
3. The ability to organize, analyze, interpret, and communicate findings to inventors on the patentability of applicant's inventions;
4. At least 3 years of patent preparation and prosecution experience with top tier patent law firm, and is an active and registered member of the U.S.P.T.O;
5. Strong work experience and background in IT, communication, signal processing, consumer electronics, and proven record of preparation and handling of multiple patent applications (over 20 cases) in this field;
6. Experience with semiconductor and circuit technologies;
7. Candidate must have excellent writing skills, strong interpersonal skills, must be excellent communicator, good listener, comfortable in dynamic, fast paced, constantly changing environment, and the ability to work within a team environment;
8. Very strong technical skills focused on electrical engineering and computer science in particular are required for this position. Background in digital Video/Audio compression and multimedia technology a plus.
Demonstrated understanding of IP laws, solid analytical skills and the demonstrated ability to work in an unstructured environment and to solve problems quickly and creatively. Ability to multi-task and handle complex assignments with minimum supervision and with excellent follow up. Must be able to interact with the company’s engineers & scientists to maximize the value of our intellectual property.
The candidate must possess an undergraduate degree in electrical engineering or computer science, and a JD from a top tier accredited law school and be a member in good standing of the Israel & US bar. Membership in the State Bar of California or State Bar of NY is strongly preferred. Admission to practice before the USPTO required.
The position entails working in a fast-paced environment with savvy and demanding clients, high standards and heavy workload. Qualified candidates must possess exceptional analytical and communication skills (both Hebrew & English), be capable of providing sound, practical advice in response to complex and rapidly changing conditions, and be able to make a positive contribution to a very collegial working environment. This attorney will have substantial autonomy and therefore must be able to work in a self-sufficient manner, including working collaboratively with other team members across disciplines. Self- motivated, hard-working team player with a can do attitude with demonstrated business acumen and ability to interact with a demanding leadership team.
Travel may occasionally be required.
University grades pre-requisite:
• Top tier EE/CS/CE, GPA over 85.
• Top tier accredited law school, GPA over 90.
The position applies for both men/women.
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מלאה |
עיר/ישוב: |
הרצליה |
תפקיד: |
איש צוות |
שנות ניסיון: |
שנה |
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