Description:
The Role:An Enterprise Security Company is looking for an experienced IP (intellectual property) attorney to join the Technology Products Group (TPG) within the legal department. TPG addresses a variety of legal needs across Proofpoint including those of all the product development teams globally, with a collaborative and business-oriented approach.
Your Day-to-Day:
- The Counsel/Senior Counsel, IP will report to the Director of IP, and will work with cross-functional teams, technical staff and outside counsel to build a sound intellectual property portfolio.
- The successful candidate will have primary responsibility for patent portfolio building and management including:
- Driving new innovation disclosure submissions and evaluations
- Providing guidance to outside counsel on all aspects of on-going patent prosecution
- Preparing initial drafts of original application filings, provisional filings, office action responses and continuation claim sets for a portion of the portfolio (to reduce outside counsel costs)
- Facilitating and driving communications between outside patent counsel and inventors
- Assuring patent claim construction aligns with business purpose and product relevance at the patent application drafting stage and throughout prosecution
- Providing input to office actions for U.S. and foreign patent filings
- Providing input from a legal and business perspective on filing decisions
- Planning and directing intellectual property committee meetings in close collaboration with other IP and technical staff
- Conducting educational meetings and idea harvesting meetings with R&D/product development teams
- Assisting and advising fellow legal team members on IP and product matters
- Assisting with IP dispute/litigation analysis and discovery
- Software and IP licensing in various contexts (e.g. commercial, collaboration, and dispute resolution) is a plus
- Some IP Litigation experience is a plus
- Some experience with open-source software usage and contribution is a plus
What You Bring to the Team:
- 5 + years of experience
- Good standing with a state bar
- Member of U.S. patent bar
- Technical and/or legal background in software, artificial intelligence/machine learning, email security and/or cloud security.