Attorney, Patent Counsel

Overview

Join to apply for the Attorney, Patent Counsel role at Qualcomm

3 days ago Be among the first 25 applicants

Get AI-powered advice on this job and more exclusive features.

General Summary

Develops, prosecutes, and manages high-quality patents, and maximizes the utilization of the patent portfolio. Manages dockets and provides guidance on patent related issues to support IP department initiatives based on knowledge of laws, legal principles, and department policies. Performs comprehensive patent and legal analysis to drive decisions on patents. Strategically transforms inventions into patent assets based on knowledge of products, technology, engineering principles, and business goals. Partners with engineers, outside counsel, support staff, and other business leaders to align on strategies to optimize work product.

Minimum Qualifications

• Bachelors degree in Electrical Engineering, Computer Engineering, Mechanical Engineering, or related field.
• Juris Doctorate from ABA accredited law school.
• US: Admitted to a state bar in good standing.
• 2+ years of experience in patent preparation, prosecution, or litigation experience.
• Appropriately registered/licensed in candidates applicable jurisdiction.
• If the role is in the US: Must be registered at the United States Patent and Trademark Office.
• If the role is in India: Must be registered with the India Patent Office.
• If the role is in China: Licensure: Must be qualified as a China Patent Agent.
• If the role is in Europe: Licensure: Must have passed the EQE.

Preferred Qualifications

• Masters degree or PhD in Electrical Engineering, Computer Engineering, Mechanical Engineering, or related field.
• Non-US: Passed bar for the country in which they practice.
• 5+ years of patent law experience at a law firm or in-house.
• 3+ years of experience in patent preparation and prosecution in wireless communication fields (with an emphasis on Wi-Fi/local area connectivity and 5G/cellular connectivity).
• 2+ years of engineering experience in software, electrical, communications, or related fields.
• 2+ years of experience in patent preparation and prosecution in software, electrical, communications, or related fields.
• 2+ years of managing a patent portfolio, including budgets.

Principal Duties And Responsibilities

• Develops patents and supports the patent portfolio based on knowledge of products, technology, and engineering principles related to ones portfolio.
• Helps to identify areas or technologies related to ones portfolio that need more or less IP protection.
• Maintains up-to-date awareness of domestic and foreign patent laws, rules, and best practices to prepare and prosecute patents worldwide.
• Analyzes strategic importance of claims, assesses prior art, and develops arguments to present to patent offices.
• Conducts patent analyses (e.g., infringement, validity) with minimal guidance to make recommendations around litigating, protecting, and/or licensing patents.
• Develops claim chart analyses that account for all patent related information to support licensing and enforcement activities.
• Provides advice and support on IP department initiatives and legal matters based on knowledge of laws, department policies, best practices, and legal risks.
• Works with team to recommend decisions to appeal, continue prosecution, and/or file continuation/divisional applications based on legal analysis.
• Reviews work of support staff and outside counsel to ensure work product is aligned with strategies and plans.
• Manages dockets, cases, and/or initiatives by planning resources (e.g., staff, time, tools), aligning on expectations for work product and deliverables, and tracking progress against milestones.
• Collaborates with engineering teams to collect, develop, and promote submission of IDFs to support portfolio development.
• Keeps leaders, team members, and stakeholders properly updated on the status of work assignments, seeking guidance when necessary.
• Participates in discussions, meetings, and portfolio and/or case reviews with colleagues to address requirements and understand implications of ones work.

Level Of Responsibility

• Works independently with little supervision.
• Provides some supervision/guidance to other members; does not have direct reports.
• Decisions are more significant in their impact, influencing overall program or project success, finances, and/or the ability to meet objectives. Errors are not readily apparent due to the complexity of work process/product or time between decisions and results. Errors typically result in significant expenditure of time, resources, and funds to correct.
• Requires verbal and written communication skills to convey complex and/or detailed information to multiple individuals/audience with differing knowledge levels. Role may require strong negotiation and influence, communication to large groups or high-level constituents.
• Works within the prescribed budgetary objectives of the department. Erroneous decisions, failure to achieve results may cause delays in schedules and result in the re-allocation of some resources.
• Has a moderate amount of influence over key organizational decisions (e.g., is consulted by senior leadership to make key decisions).
• Most tasks require multiple steps which can be performed in various orders; tasks require simultaneously executing multiple cognitive abilities and maintaining information in short or long-term memory while performing the task.
• Creativity is needed to draft original documents, imagery, or work products within established guidelines.
• Works on abstract problems in variable situations that typically require complex analysis, interpretation, or evaluation of intangible factors. Directs the resolution of complex problems that have impact beyond own area. Participates in corporate development of methods, techniques, and evaluation criteria for projects, programs, and people.
• Occasionally participates in strategic planning within own area affecting immediate operations.

Qualcomm is an equal opportunity employer. If you are an individual with a disability and need an accommodation during the application/hiring process, rest assured that Qualcomm is committed to providing an accessible process. You may e-mail or call Qualcomms toll-free number found here. Upon request, Qualcomm will provide reasonable accommodations to support individuals with disabilities to be able participate in the hiring process. Qualcomm is also committed to making our workplace accessible for individuals with disabilities. (Keep in mind that this email address is used to provide reasonable accommodations for individuals with disabilities. We will not respond here to requests for updates on applications or resume inquiries).

EEO Employer: Qualcomm is an equal opportunity employer; all qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability, Veteran status, or any other protected classification.

Pay Range And Other Compensation & Benefits

$161,000.00 - $241,400.00

The above pay scale reflects the broad, minimum to maximum, pay scale for this job code for the location for which it has been posted. Salary is only one component of total compensation at Qualcomm. We offer a competitive annual discretionary bonus program, RSU grants, and a comprehensive benefits package. Your recruiter can discuss details.

Notes : This posting includes information about seniority level, employment type, job function, and industries as listed below.

Seniority level

• Not Applicable

Employment type

• Full-time

Job function

• Other

Industries

• Telecommunications

To all Staffing and Recruiting Agencies: Our Careers Site is only for individuals seeking a job at Qualcomm. Staffing and recruiting agencies and individuals being represented by an agency are not authorized to use this site or to submit profiles, applications or resumes, and any such submissions will be considered unsolicited. Qualcomm does not accept unsolicited resumes or applications from agencies. Please do not forward resumes to our jobs alias, Qualcomm employees or any other company location. Qualcomm is not responsible for any fees related to unsolicited resumes/applications.

EEO Statement : Qualcomm is an equal opportunity employer; all qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability, Veteran status, or any other protected classification.