Hitachi

Senior IP Counsel/Patent Attorney

Hitachi

full-time

Posted on:

Location Type: Hybrid

Location: California • New York • United States

Visit company website

Explore more

✨ AI Apply
Apply

Salary

💰 $153,614 - $192,017 per year

Job Level

Senior

About the role

  • Partner cross functionally with Group Legal, R&D, and business teams to deliver proactive, business focused IP counseling.
  • Advise on IP matters in commercial, transactional, and dispute contexts, including pre litigation and litigation support.
  • Draft, negotiate, and manage IP related agreements, including licenses, technology development agreements, and NDAs.
  • Support IP aspects of M&A, strategic transactions, and business initiatives.
  • Counsel U.S. businesses on freedom-to-operate risk, conducting and/or supervising freedom to operate/clearance investigations.
  • Oversee and manage outside counsel across IP legal matters.
  • Contribute to development and execution of Global IP strategy, including policies and procedures.
  • Counsel U.S. businesses and technical leadership on patent strategy.
  • Wafting anork directly with engineers and technologists to identify patentable inventions and drive invention disclosure quality and volume.
  • Lead invention harvesting activities, including design reviews, brainstorming sessions, and innovation workshops.
  • Lead patent procurement and portfolio development efforts, including: Advising on patentability, conducting and/or supervising patentability investigation Drafting prosecuting U.S. patent applications; Coordinating international filing and prosecution strategies; Managing patent portfolios, including office action responses informed by business input; Overseeing outside counsel on global patent prosecution matters.
  • Manage and continuously improve invention disclosure submission, review, and evaluation processes.

Requirements

  • USPTO qualified Patent Attorney with admission to a U.S. State Bar.
  • Minimum of 10 years of experience in the legal field of intellectual property in a multi-national setting, including transactional matters (licensing and other IP-related contracts), enforcement of IP rights, and managing contested matters including litigation and pre-litigation advice, and developing patent portfolios, in particular in the areas of computer science, software and ITxOT/Physical AI.
  • Thorough expert knowledge of US IP laws, rules, regulations and practice and familiarity with the relevant counterpart systems (e.g., EU).
  • Strong patent prosecution skills.
  • Proven ability to quickly identify, prioritize and analyze issues, to create solutions, to communicate in a counseling role, and to work effectively and team with all levels of management and members of the IP and legal departments.
  • Strong ability to be a counselor to the group businesses through clear communication skills- written and oral.
  • Demonstrated ability to work with and manage outside counsels.
  • Experience working in a global IP environment.
  • Some regional travel will be required.
  • Fluency in English required.
Benefits
  • Health insurance
  • 401(k) matching
  • Flexible work hours
  • Paid time off
  • Remote work options
Applicant Tracking System Keywords

Tip: use these terms in your resume and cover letter to boost ATS matches.

Hard Skills & Tools
patent prosecutionfreedom-to-operate investigationsIP counselingdrafting agreementsnegotiating agreementsmanaging patent portfoliosconducting patentability investigationsU.S. patent applicationsinternational filing strategiesIP strategy development
Soft Skills
communication skillsproblem-solvingteam collaborationcounselingprioritizationanalytical skillsleadershipinnovation facilitationrelationship managementadaptability
Certifications
USPTO qualified Patent AttorneyU.S. State Bar admission