Minimum qualifications:
- JD, equivalent degree, or equivalent practical experience.
- 7 years of patent-related experience at an attorney level.
- 4 years of technical and patent experience with cellular standards.
- Admitted to the bar and in good standing or otherwise authorized to practice law (e.g. have registered in-house status) in the state in which the role is located.
Preferred qualifications:
- Experience targeting/analyzing claims with respect to cellular standards, generating claim charts, and evaluating patent portfolios.
- Proficiency with European Patent Office (EPO) and Patent Cooperation Treaty (PCT) filing and prosecution.
- Ability to develop productive relationships with legal colleagues, engineering managers, and engineers.
- Excellent communication skills.
About the job
Our Patent team is an invigorating, inspiring team of innovators and attorneys who are passionate about future technologies and excited about resolving their ensuing legal challenges. As a member of this team, you have the unique opportunity to develop and implement Google's strategy to protect, defend and capture the value of its patents. You dive into varied and interesting tasks that include patent-related protection, licensing, dispute resolution (pre-litigation and litigation), acquisition, deals and policy work. You work with engineers, product developers, executives and other legal team members, and are responsible for managing outside counsel.
As an attorney on this team, you will focus primarily on providing support to Google’s efforts to build a portfolio of cellular standard essential patents. You’ll be involved with setting patent strategy, developing the patent portfolio, and ensuring applications and patents are aligned with cellular standards.
20th century laws don't always solve 21st century problems, and Google Legal crafts innovative approaches for working with some of the toughest legal challenges of the information age. Whether you're a patent attorney, an intellectual property expert or an engineer headed to law school, Google Legal lets you address unanswered legal quandaries and create new precedents. Our innovative services raise challenging questions that demand creative and practical answers. We provide those answers by working at the crossroads of the law and new technology, helping Google build innovative and important products for users around the world.
Responsibilities
- Pro-actively manage prosecution of patent portfolio in light of 3GPP cellular standards to ensure that new and pending applications correspond to 3GPP cellular standards throughout the development of the standards and the prosecution of the portfolio.
- Provide and leverage technical expertise in the area of cellular standards to develop Google’s 3GPP patent portfolio, and continue to grow and evolve expertise as 3GPP standards develop over time.
- Develop relationships with, and counsel/educate, engineering and business clients on patent-related matters and reducing patent risk.
- Counsel engineering and business clients on IP sharing/ownership with third-party partners, including engagement with standards setting bodies.
- Collaborate with commercial counsel to address patent-related issues in commercial deals, and negotiate and draft patent-related provisions in agreements. Evaluate and act on third-party patent threats and potential patent acquisition, divestiture, and licensing opportunities.
