Senior IP Counsel

Huawei Technologies USA Inc.; San Jose (CA); On-site; USD 154,000 - 228,000; Full time

Job summary

Futurewei Technologies, the US R&D affiliate of Huawei, seeks a Senior IP Counsel to manage patent portfolio development and provide comprehensive IP support for US-based clients. The role may mentor junior patent staff and involve occasional prosecution management for overseas affiliates before the USPTO.

Qualifications include a degree in Electrical Engineering or related field, USPTO registration, and a JD (preferred) with strong patent prosecution and communication skills.

Qualifications

• JD strongly preferred, but exceptional patent agent candidates will also be considered.
• Strong background in patent prosecution.
• Excellent oral and written communications skills.
• Possess patent legal and analytical skills, including drafting responses to office actions and advising clients on IP issues.
• Demonstrate sound judgment and integrity with regard to internal policies and external rules.
• Strong technical background in Electrical Engineering, Physics, or Computer Science; telecommunications experience desired.
• Willingness to travel domestically and internationally.

Responsibilities

• Provide comprehensive IP support to US-based R&D clients, including patent review board support and portfolio management.
• Mentor junior patent engineering staff on drafting, prosecution, and USPTO procedures.
• Directly manage prosecution of patent applications from overseas affiliates before the USPTO.
• Advise on portfolio development strategies and IP issue resolution for Futurewei business units.
• Oversee outside counsel engaged in patent procurement and supervise patent engineers.
• Support Chief IP Counsel in broader IP activities including copyright, trade secret, open source, and licensing.
• Communicate technical and legal issues to client groups and IP personnel globally.
• Assist in developing policies to optimize Huawei’s US patent portfolio.

Skills

Patent prosecution

Communication

EE/CS background

Education

Electrical Engineering degree

Juris Doctor (JD)

US Bar membership

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.