Senior IP Counsel I

3 hours ago

Lincolnshire, Illinois, United States Zebra Technologies Corporation Full time
Job Title: Senior IP Counsel I

At Zebra Technologies Corporation, we are a community of innovators who come together to create new ways of working to make everyday life better. United by curiosity and care, we develop dynamic solutions that anticipate our customer's and partner's needs and solve their challenges.

Job Summary:

We are seeking a highly skilled Senior IP Counsel I to join our team. The ideal candidate will have 7+ years of hands-on patent preparation and prosecution experience and an advanced skillset to perform key tasks independently. The Senior IP Counsel I will be responsible for independently preparing and prosecuting utility and design patent applications, managing assigned patent portfolio, managing outside counsel, interacting closely with business partners to understand business needs and objectives, understanding competitive landscape, and performing invention harvesting activities.

Key Responsibilities:
  • Independently prepares and prosecutes utility patent applications for an assigned patent portfolio, and actively manages outside counsel to do the same
  • Drafts and prosecutes design patent applications across all Zebra business units
  • Works with a Product and Technology Analyst to manage drafting of all defensive publications for Zebra
  • Participates in the foreign filing decision process
  • Interacts closely with outside counsel, business partners, and members of the Legal Department to foster relationships, to understand business needs and business objectives, and to ensure that matters are being handled in a timely and competent manner
  • Leads and/or supports invention harvesting activities to assist assigned business unit(s) in capturing inventive activity
  • Partners with key stakeholders to execute global IP strategies for assigned portfolio
  • Works with Legal team members to assist in evaluating assigned patent portfolio and make strategic decisions related to the assigned patent portfolio
  • Actively participates in patent review committee meetings and other activities related to the review and evaluation of invention disclosures, and advises on patentability issues related to assigned technology areas
  • Generates and presents training materials, as assigned, to educate and inform business partners on various intellectual property matters
  • Understands competitive landscape for assigned business unit(s)
  • Understands, analyzes and articulates up to moderately complex issues and/or relevant laws, worldwide, and recommends solution or course of action
  • Prepares reports and provides work product to Director Counsel Patent Operations on as-needed basis
  • Engages business partners and Legal Department colleagues to gain knowledge and understanding of Zebra's business units/functions as they relate to area(s) of responsibility
  • Assists in special projects, as assigned
Qualifications:
  • Minimum Qualifications:
    • Juris Doctor from accredited law school, with strong academic credentials
    • Technical bachelor's degree and an excellent understanding of electrical and software arts
    • 7+ years of hands-on patent preparation and prosecution experience and an advanced skillset to perform key tasks independently
    • Registration to practice before the U.S. Patent and Trademark Office
  • Preferred Qualifications:
    • Technical background with an undergraduate degree in Electrical Engineering, Computer Engineering, Computer Science, or Physics
    • Work hybrid schedule in Lincolnshire, IL (remote candidates will be considered)
Key Skills and Competencies:
  • Excellent analytical, research, and organization skills
  • Exceptional interpersonal and communication (written and oral) skills
  • Ability to provide strong strategic thought to Zebra's patent processes and best practices
  • Ability to work under pressure with aggressive deadlines, in a dynamic environment, including managing and prioritizing a large prosecution docket
  • Acts as a leader to provide advice in a business manner based on principles of appropriate risk management rather than risk avoidance
  • Exercises initiative to solve up to moderately complex issues with minimum supervision
  • Ability to manage assigned docket items to closure with minimum supervision, and the judgment to know when to ask questions and escalate issues
  • Participates as a team player both within and outside the Legal Department
  • Strong business acumen
  • Unquestioned ethics and integrity
  • State bar admission
  • Registration to practice before the U.S. Patent and Trademark Office

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