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Intellectual Property Counsel

2 months ago

San Jose, California, United States Power Integrations, Inc. Full time

The role of the Intellectual Property Counsel is pivotal in the establishment and oversight of the organization's patent and trademark assets.

This position requires a strong foundation in electrical engineering principles combined with expertise in the patent and trademark landscape to create high-quality patent submissions and trademarks, while also providing strategic insights for business decisions. A solid background in electrical engineering and familiarity with the patent and trademark procedures is essential. Knowledge of analog circuitry and switched-mode power supply technology is advantageous. Exceptional writing and editing capabilities in English are crucial.

Key Responsibilities:

  1. Draft and manage domestic patent applications, either directly with the relevant authorities or in collaboration with external legal counsel.
  2. Prepare and oversee international patent applications in conjunction with outside legal representatives.
  3. Formulate claims for both offensive and defensive patent strategies.
  4. Identify technologies suitable for patent protection through collaboration with integrated circuit designers and applications engineers.
  5. Coordinate with paralegals and administrative personnel to submit patent and trademark applications along with necessary documentation.
  6. Evaluate the patent and trademark portfolio to assess advantages and costs, presenting findings to senior management.
  7. Conduct trademark clearance searches and perform analyses within domestic and international databases.
  8. Prepare, file, and manage U.S. trademark applications and oversee renewals.
  9. Organize and manage foreign trademark applications, maintaining registrations with legal counsel.
  10. Lead brand protection initiatives and work with internal teams to ensure compliance with brand standards and trademark usage.
  11. Draft and review demand letters, cease and desist notices, and amicable agreements.

Qualifications:

  1. Juris Doctor from an accredited law institution and admission to the California state bar.
  2. Registered with the United States Patent and Trademark Office.
  3. Bachelor's, Master's, or Doctorate in electrical engineering or a related technical discipline, demonstrating proficiency in analog electronic circuit theory and application.
  4. A minimum of five years of experience in patent and trademark prosecution.
  5. Highly developed technical writing and editing skills, showcasing a superior command of the English language.
  6. Experience in drafting patent applications is preferred; other relevant experience includes writing and editing for technical publications.
  7. Proficient in software tools such as Visio, Word, Excel, and PowerPoint for document preparation that includes drawings, images, and text.
  8. Familiarity with Patent Center and electronic docketing systems, such as Foundation IP, is a valuable asset.
  9. Experience in circuit construction and evaluation in laboratory settings is desirable.
  10. Knowledge of off-line switched mode power supply design or experience with high voltage semiconductor device fabrication is a plus.

Power Integrations is dedicated to fostering teams that drive innovation and evaluates various factors when determining compensation. The annual base salary range for this position is competitive and commensurate with experience and qualifications.

Power Integrations also provides eligible employees with a comprehensive rewards package that includes equity, medical benefits, employee stock purchase plans, retirement savings plans, tuition reimbursement, and time-off programs.