Senior IP Counsel

Futurewei Technologies, Inc.; San Jose (CA); On-site; USD 154,000 - 227,700; Full time

Job summary

Futurewei Technologies, Inc. seeks a Senior IP Counsel to develop and manage its US patent portfolio. You will support US R&D clients, participate in patent review boards, and mentor engineers on drafting and prosecution before the USPTO.

The role involves coordinating with overseas affiliates and supervising outside counsel when needed. Qualified candidates have a JD, USPTO registration, and 3+ years of patent prosecution experience (5+ preferred).

Qualifications

• University degree in electrical engineering or related field.
• Registration to practice before the US Patent & Trademark Office.
• Juris Doctor and active state bar preferred; exceptional patent agent candidates considered.
• Minimum 3 years patent prosecution experience; 5+ years preferred.
• Strong oral and written communication skills.
• Sound judgment and integrity regarding internal policies and regulations.
• Strong technical background in EE, physics, or CS; telecom experience desirable.
• Willingness to travel domestically and internationally.

Responsibilities

• Provide IP support to US-based R&D clients, including patent review board support and portfolio management.
• Mentor junior patent engineers in drafting and prosecution before the USPTO.
• Occasionally manage prosecution for overseas affiliate patent applications before the USPTO.
• Advise on portfolio development strategies and support patent review boards.
• Oversee outside counsel for patent procurement and training of patent staff.
• Support Chief IP Counsel in copyright, trade secret, open source, and licensing matters.
• Communicate technical and legal issues to global client groups and IP teams.
• Develop policies to optimize Huawei’s US patent portfolio and practice.

Skills

Patent prosecution

Communication skills

Judgement and integrity

Technical background EE/CS/Physics

Multicultural environment

Travel willingness

Education

Electrical Engineering degree

Juris Doctor (JD)

USPTO registration

Job description

Futurewei Technologies, the US R&D affiliate of Huawei Technologies Co., Ltd., is seeking to fill a Senior IP Counsel position. The successful candidate will have at least 3 years of experience, ideally 5 years or more, either in-house or at a private law firm, with a strong emphasis on patent portfolio development and management. The position is based in Addison, Texas, or San Jose, California, or open for discussion for highly qualified candidates.

Responsibilities For The Senior IP Counsel Position Include

• Provision of comprehensive intellectual property support to US-based research and development clients, including patent review board support, patent portfolio development and management, and claim charting of Futurewei claims against relevant entities.
• The possible mentoring of junior patent engineering staff from Futurewei’s overseas affiliates as to patent application drafting, prosecution and practice procedures before the US Patent & Trademark Office.
• The occasional direct management of prosecution for other patent applications, from Futurewei’s overseas affiliates, before the US Patent & Trademark Office.
• Rendering of comprehensive intellectual property support to various Futurewei Business Units, including advising as to portfolio development strategies and rendering of legal advice to corresponding Futurewei patent review boards.
• Critical review and management of outside counsel engaged in patent procurement activities on behalf of Huawei, as well as attending to oversight and training of patent engineer personnel engaged in preparation and prosecution of U.S. and foreign patent applications.
• Support of the Chief IP Counsel in general intellectual property activities such as copyright, trade secret, open source, and licensing.
• Analysis and communication of technical and legal issues to client groups and IP department personnel globally.
• Assist in the development of policies and procedures to optimize Huawei’s US patent portfolio and associated patent practice.

Requirements

• A university degree in electrical engineering or a related engineering field
• Registration to practice before the US Patent & Trademark Office
• A Juris Doctor (“JD”) post-graduate degree and an active state bar membership are strongly preferred, but exceptional patent agent candidates will also be considered
• Strong background in patent prosecution
• Demonstrates excellent oral and written communications skills
• Possess excellent patent legal and analytical skills, including demonstrated ability to independently formulate and draft appropriate responses to office actions, and advise clients as to various intellectual property issues
• Demonstrate sound judgment and integrity, particularly regarding compliance with internal policies and external rules and regulations
• Must possess a strong technical background in Electrical Engineering, Physics and/or Computer Science; prior experience working within the telecommunications industry is desirable
• Minimum 3 years of patent prosecution experience, 5+ years preferred
• Ability and interest to work effectively in a multicultural environment
• Willingness to travel domestically and internationally on a limited basis

Work Location:

Addison, Texas, or San Jose, California, or open for discussion for highly qualified candidates.

This full-time position has a base salary range of $154,000 to $227,700 for roles based in California. Actual compensation will be determined based on job-related skills, years of relevant experience, education backgrounds, qualifications, and other job-related factors. For roles based in other locations, compensation may vary. Additional details (bonus, benefits, relocation, etc.) of the compensation package will be provided to candidates during the interview process.

Futurewei Technologies, Inc. is proud to be an Equal Opportunity Employer.

All qualified applicants will receive consideration for employment without regard to race, color, gender, sexual orientation, gender identity or expression, religion, national origin, marital status, age, disability, veteran status, genetic information, or any other protected status under federal, state, and local laws.