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

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