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Working under general supervision of the VP of Intellectual Property, the Patent Counsel position is responsible for managing all ball patent filings and ball prosecution, supporting litigation, and supporting clearance of new TaylorMade products.

Essential Functions And Key Responsibilities

• Ensures timely patent creation and filing in light of the accelerated filing requirements imposed by America Invents Act of September 16, 2011 and its first to file requirements for patents filed after March 16, 2013.
• Works closely with TaylorMade’s R&D teams to research inventions by proactively coordinating meetings with management and scientists to discuss potential patent filings.
• Aggressively researches patentability of ideas created by the R&D teams pertaining to TaylorMade product development.
• Draft and file all ball patents to cover competitive landscape and new TaylorMade products.
• Draft and file all updates to inventions in all ball patent applications on a regular basis.
• Draft and file all office actions in the ball portfolio.
• Manage and update ball patent marking website and maintain fast and efficient marking program.
• Strategically manage all ball utility and design patent filings and prosecution.
• Manage outside law firms in the prosecution of patent applications.
• Provide litigation and licensing support to in-house and outside counsel.
• Draft or revise joint development agreements, general licensing agreements, supplier agreements, NDAs, patent license agreements, and court briefs.
• Negotiate and draft cross-license agreements with direct competitors to eliminate design constraints.
• Support general practice corporate attorneys in various contract drafting and negotiations.
• Performs other responsibilities as required

Knowledge And Skills Requirements

• Excellent verbal and written English communication skills
• Excellent skills in technical and legal writing
• Acts with speed and urgency to draft and prosecute patent applications in a timely fashion with minimum turnaround time.
• Ability to manage a broad range of chemistry/chemical related patent/research activities.
• Demonstrated strong strategic and analytical thinking.
• Experience with global patent prosecution, patent appeals, re-examination, re-issue, inter partes reviews proceedings, and litigation is a plus.
• Exemplifies highest ethical standards.
• Ability to work across teams and manage multiple priorities to accomplish multiple tasks
• Proficient in Microsoft Suite (Word, Excel, Outlook, PowerPoint)
• Knowledge of and interest in golf preferred.

Education, Training, Professional Certification And Work Experience

• BS in Chemistry or Chemical Engineering.
• JD from accredited Law School.
• Member in good standing of a State Bar, or eligible to practice as a California registered in-house attorney.
• USPTO registration number required.
• 1+ years’ experience as a patent agent/attorney specializing in drafting patents in the chemical arts.

Work Environment / Physical Requirements

• Normal office conditions (fully onsite role) with extensive computer usage
• Ability to work extended hours as necessary
• Occasional travel required
• Able to work efficiently and accurately in an atmosphere of frequent interruption.
• Light physical effort equal to frequent lifting or moving of lightweight materials

TaylorMade is a performance driven organization and our total rewards approach to compensation is designed to support this. We consider many factors in determining base compensation, including position scope, job related knowledge, education, skills, experience, and work location. The expected annual base pay range for this position is $150,000 - $165,000. Additional benefits, such as health & wellness, performance bonuses, product discounts, holidays, paid time off, etc. may also be offered in accordance with our plans.

TaylorMade Golf Company is an equal opportunity employer. All qualified applicants receive consideration for employment without regard to race, religious creed, color, national origin or ancestry, physical or mental disability, medical condition, genetic information, marital status, sex, pregnancy, gender, gender identity, gender expression, age, sexual orientation, military and veteran status or any other basis protected by federal, state or local law, ordinance, or regulation.