IP Counsel
Apply NowCompany: Diodes
Location: Plano, TX 75025
Description:
Duties & Responsibilities
Required Experience & Skills
Education
Special Job Characteristics
- To develop, implement and optimize a comprehensive global IP strategy for Diodes
- Build, manage and expand patent portfolios that provide value and protect R&D innovations
- Establish and maintain IP governance
- Protect and defend Diodes' IP, anticipate IP disputes, advise on risk mitigation and manage litigation when necessary
- Advise product and R&D teams on patentability, freedom-to-operate, IP risks and other IP matters
- Manage filing programs, patent preparation and prosecution conducted by outside counsel.
- Manage in-house patent team in Asia and the US.
- Coordinate between product teams and R&D teams to foster invention capture, align scope of pending and issued patent applications with current and future product roadmaps.
- Regularly review full IP docket and conduct landscaping and clearance assessments with paralegal and/or docketing service.
- Perform third-party monitoring, competitor analysis, potential conflicts and support due diligence
- Conduct or manage prior art searches.
- Support Patent Review Committee / Portfolio Review, invention harvesting, and IP risk assessment meetings, including preparation and follow-up.
- Conduct or manage special IP projects.
- Research, analyze, and provide guidance on a variety of patent and IP-related issues.
- Counsel inventors/employees on IP-related inquiries and documentation development.
- Assist with article reviews, IP licensing, training, inventor recognition, budgeting, developing/refining tools, processes, policies, etc., for accomplishing the IP function's duties and responsibilities.
- Provide internal training and support for technical innovation
Required Experience & Skills
- USPTO registration in good standing
- Experience building and managing global patent estates in the semiconductor field, condensed matter physics or similar
- Minimum of 5 years of patent preparation/prosecution, w/ law firm experience preferred
- Strong technological background and familiarity with both hardware and software
- Proficiency with Microsoft Office programs and online research tools
- Knowledge of Trademark law and trademark registration a plus
- Familiarity with docketing systems (e.g., Computer Packages, Inc.) and IP analytic tools (e.g., PatSnap) a plus
- Ability to align IP strategy with business objectives and utilize IP strategy to contribute to Diodes' growth and success
Education
- BS degree (or other technical degree or experience) in electrical engineering, computer engineering, computer science, physics, mechanical engineering, or related discipline
- Excellent academic credentials
Special Job Characteristics
- High personal standards of excellence and capacity to learn rapidly
- Strong communication and interpersonal skills
- Ability to work well independently and with coworkers, sharing knowledge as part of a team
- Capable of handling sensitive information in the strictest of confidence
- Adaptability to work with different personalities and changing priorities
- Outstanding verbal and written communication and collaborative skills necessary to partner with and advise R&D teams, physicists and other stakeholders in cross-functional teams