IP Counsel - Plano, TX

Duties & Responsibilities

• 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

Click here to apply. 

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