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Qualcomm

Designs mobile chips and licenses wireless patents

Patent Counsel - Legal Counsel

Intellectual Property (IP)Confirmed live in the last 24 hours
Full-timeSan Diego, CA, USA

About the Job

Requirements

  • A Juris Doctorate degree or international equivalent is required.
  • At least five years of relevant experience as counsel at a law firm or in-house is required.
  • An active bar license or other lawful ability to practice law in the state or jurisdiction where the employee will be located is required, such as the ability to gain admission as registered in-house counsel.
  • Preferred: A Master's degree or PhD in Electrical Engineering, Computer Engineering, Physics, or a related field.
  • Preferred: Passed the bar for the country in which the candidate practices (for non-U.S. candidates).
  • Preferred: At least five years of patent law experience at a law firm or in-house.
  • Preferred: At least three years of patent preparation and prosecution experience in wireless communication fields, emphasizing 5G cellular connectivity and related technical standards.
  • Preferred: At least two years of engineering experience in software, electrical, communications, or related fields.
  • Preferred: At least two years of patent preparation and prosecution experience in software, electrical, communications, or related fields.
  • Preferred: At least two years of experience managing an international patent portfolio, including directing outside counsel and familiarity with patent laws and practices in non-U.S. jurisdictions.
  • Candidates must be capable of understanding complex technologies, responding to rapidly changing business plans, and identifying patent opportunities with strategic significance.

Responsibilities

  • Develop patents and support the patent portfolio based on knowledge of products, technology, and engineering principles related to the portfolio.
  • Manage dockets, cases, and initiatives by planning resources such as staff, time, and tools; aligning expectations for work product and deliverables; and tracking progress against milestones.
  • Review work of outside counsel and support staff to ensure work product aligns with strategies and plans.
  • Analyze the strategic importance of claims, assess prior art, and develop arguments to present to patent offices.
  • Develop and analyze claim charts that account for patent-related information to support licensing and enforcement activities.
  • Conduct patent analyses, including infringement and validity analyses, with minimal guidance to make recommendations about litigating, protecting, or licensing patents.
  • Maintain current awareness of domestic and foreign patent laws, rules, and best practices to prepare and prosecute patents worldwide.
  • Participate in discussions, meetings, and portfolio or case reviews with colleagues to address requirements and understand implications of the work.
  • Identify areas or technologies related to the portfolio that need more or less intellectual property protection.
  • Collaborate with engineering teams to collect, develop, and promote the submission of invention disclosure forms to support portfolio development.
  • Provide advice and support on intellectual property department initiatives and legal matters based on knowledge of laws, department policies, best practices, and legal risks.
  • Work with the team to recommend whether to appeal, continue prosecution, or file continuation or divisional applications based on legal analysis.
  • Keep leaders, team members, and stakeholders updated on assignment status, seeking guidance when necessary.
  • Perform strategic portfolio management, manage outside counsel, draft responses to official communications, and interview patent examiners.
  • Perform infringement, clearance, patentability, and validity analyses, and collaborate with counsel across jurisdictions to ensure compliance with local practices and laws.
  • Provide legal analysis of products, licenses, standards, contracts, and potential acquisitions or investments as needed.

About the Company

Qualcomm

Designs mobile chips and licenses wireless patents

Qualcomm designs the Snapdragon processors and modems inside many Android phones, and it licenses its wireless patents to device makers around the world. It helped commercialize CDMA, the cellular technology behind 3G networks, and its patents cover core parts of the 4G and 5G standards that phones use to connect. The company does not run its own chip factories; contract foundries make its chips, which it sells to makers of phones, PCs, cars, and connected devices. Device makers also pay Qualcomm royalties for using its patented technology, which forms a second business alongside chip sales. Qualcomm was founded in 1985 and is based in San Diego, California.

Company size
10,001+
Company stage
IPO
Headquarters
San Diego, CA
Founded
1985

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