W3Global · 2 weeks ago
In-house IP Counsel
W3Global is a fast-growing organization in the semiconductor deep-tech sector, seeking an experienced In-House IP Counsel. This role involves leading the development and execution of a global patent strategy, managing the patent lifecycle, and collaborating with engineering and product teams on intellectual property matters.
ConsultingRecruitingStaffing Agency
Responsibilities
Develop, refine, and execute a global IP strategy aligned with the company's technology and product roadmap
Lead and manage the full patent lifecycle, including invention harvesting, prior art analysis, drafting and prosecution oversight, portfolio optimization, and maintenance across multiple jurisdictions
Coordinate and manage external patent counsel globally, providing technical and strategic guidance on filings, office actions, oppositions, and appeals
Conduct freedom-to-operate (FTO), patentability, and competitive landscape analyses in highly competitive semiconductor and materials technology domains
Support IP aspects of commercial transactions, including NDAs, licensing agreements, joint development agreements, and strategic collaborations
Establish internal IP processes and training programs to encourage invention disclosures, protect trade secrets, and promote IP awareness across the organization
Qualification
Required
Juris Doctor (JD) or equivalent law degree with active bar membership in at least one U.S. jurisdiction; eligibility to practice as in-house counsel in California
7+ years of post-qualification experience focused on patent strategy, counseling, and portfolio management, preferably within semiconductor, materials science, or deep-tech hardware environments
Strong experience managing complex patent portfolios, including coordinating filings across the USPTO, EPO, and major Asian patent offices
Proven experience handling patent portfolios of 100+ assets, including prioritization, budget management, and alignment with business strategy
Excellent communication skills with the ability to translate complex technical concepts into clear legal and strategic guidance
Preferred
Technical degree (B.S., M.S., or Ph.D.) in Electrical Engineering, Materials Science, Physics, or a closely related field strongly preferred
Benefits
Competitive compensation
Opportunity to build and lead the IP function within a fast-growing semiconductor deep-tech organization
Close collaboration with highly accomplished engineers, inventors, and industry experts