Senior Patent Counsel

asml; San Diego (CA); On-site; USD 180,000 - 240,000; Full time

Job summary

ASML’s Corporate Intellectual Property (CIP) department in San Diego seeks a Senior IP/Patent Attorney to join the local IP team.

You will develop and manage a global patent portfolio, supervise outside counsel, align the portfolio with ASML’s product roadmap, and collaborate with R&D and engineering to mitigate IP risk.

Qualifications

• JD from an accredited law school with excellent academics.
• BS in engineering or physical science; advanced degree a plus.
• Active license to practice before the USPTO.
• At least 6 years of patent prosecution experience.

Responsibilities

• Develop and manage a global patent portfolio; assess disclosures and recommend strategy.
• Supervise outside counsel in drafting and prosecuting patent applications; review drafts.
• Execute ASML IP strategies including patent filing and product clearance.
• Contribute to IP tactic development and portfolio alignment with business goals.
• Collaborate with Research, Development & Engineering to understand products and goals.
• Assess competitors' IP positioning and freedom-to-operate.
• Advise on IP-related contractual terms (agreements, licenses, R&D).
• Direct or guide legal research to resolve IP issues.

Skills

Global IP strategy

Patent portfolio management

Invention analysis

External counsel management

Cross-functional collaboration

Education

Juris Doctor (JD)

Bachelor of Science in Engineering/Physical Science

USPTO admission

Job description

Introduction to the roleWithin ASML, the Corporate Intellectual Property (CIP) department is responsible for maximizing ASML's global IP position to protect and support ASML's business. In particular, the CIP department strives to preserve freedom to operate for ASML, to establish and maintain a portfolio of IP rights, and to mitigate IP risk. The CIP department includes about 85 members distributed across four worldwide locations (Veldhoven in the Netherlands; and Wilton, San Diego, and San Jose in the USA).

Role and responsibilities

The CIP department is seeking a qualified U.S. patent attorney to be based in San Diego, CA USA. You'll be a member of the San Diego IP team reporting to the local IP line manager and providing services to a corps of scientists, engineers, and management that is driving ASML's EUV and Cymer's DUV light source research and development.

You’ll help to establish, prosecute, and maintain a worldwide patent portfolio in the field of light sources for lithography systems, and to evaluate and mitigate patent risks from a worldwide perspective. Furthermore, you’ll contribute to the completion of IP-related projects, such as patent portfolio reviews and process updates, and contribute to the development of IP tactics.

As a Senior IP/Patent Attorney, you’ll:

• Actively develop and support management of a global patent portfolio, including assessing invention disclosures, presenting at invention review meetings, and recommending strategic portfolio development and maintenance.
• Supervise and direct outside counsel to properly prepare and prosecute patent applications, including critically reviewing drafts and providing response suggestions.
• Contribute to the execution of ASML IP strategies, including patent filing and product clearance.
• Contribute to developing the tactics for the IP strategy.
• Collaborate with various internal stakeholders (e.g., Research, and Development & Engineering groups) to build a detailed knowledge of current and future ASML products and business goals, align the patent portfolio with the business goals, identify opportunities to establish IP protection, determine existence of patent risks and mitigate such risks.
• Assess patent and other IP positioning of competitors (i.e., freedom to operate)
• Evaluate third party patent infringement claims against Company subject matter areas of interest including research, products, or technologies.
• Assist with analyzing, advising, and/or negotiating IP-related terms of various contracts, including supply agreements, service agreements, R&D agreements and patent licenses as directed and/or requested by CIP and/or Company management.
• Conduct and/or direct administrative staff in the conduct of legal research directed to resolving legal and/or procedural issues encountered in the advancement of, or challenges to, Company intellectual property assets.
• Perform other duties as assigned.

Education and experience

To help us secure a strong intellectual property position, you’ll need experience working in the field of intellectual property including substantial experience in patent law. As a senior IP/patent attorney, you’ll need:

• An active license to practice law in at least one U.S. state or the District of Columbia and a Juris Doctor (J.D.), from an accredited law school with excellent academic performance.
• A Bachelor of Science (BS) degree in engineering or physical science disciplines, such as mechanical engineering, mechatronics, physics, optics, electrical engineering, or comparable technical fields. An advanced degree in one of those fields is considered a plus.
• An active license to practice before the U.S. Patent and Trademark Office.
• At least 6 years of relevant patent prosecution experience.Experience managing outside counsel and assuring their preparation and prosecution of patent applications is completed in a cost efficient manner (preferred).

Skills

Working at the cutting edge of technology, you’ll face new challenges to your technical knowledge and legal creativity. To thrive in this job, you’ll need the following skills:

• Broad foundational technical knowledge, and intellectual flexibility and curiosity to quickly assimilate complex technical and physical principles.
• Ability to conduct detailed technical analysis while maintaining a high-level strategic view.
• Full understanding of area of specialization with ability to resolve a wide range of issues in creative ways.
• Strong analytical and communication skill, including ability to translate and analyze data and to effectively present analysis and propose future action through written and/or graphic formats.
• Excellent judgment and critical thinking skills.
• Decisiveness and initiative.
• Stress-resilience.
• Ability to work proactively and effectively both independently and in teams with a diverse group of colleagues and internal clients in multiple countries and to maintain strong communication with team.
• Excellent client service ethics and skills, with an advanced unders