The Digital IP Attorney serves as an integral member of multiple software-related technology development centers focused on developing software supporting wellsite (drilling and production) operations and services. for subsurface characterization and oilfield services planning, providing IP legal services and advice in support of software and digital product offerings development. The successful candidate will have strong experience in patent drafting and prosecution, overall intellectual property protection, technology related agreements, intellectual property analysis, and providing guidance to technical persons and business management regarding intellectual property. The right candidate will enjoy learning about developing complicated technologies in a dynamic environment and will be able to perform independently. The right candidate will be a self-starter with a team attitude and be able to anticipate IP needs and partner with engineering to secure a competitive advantage and protect disruptive technologies.
Given the software-intensive nature of this position, highly qualified candidates will have technology industry experience in software or other technology companies developing software products that are deployed via traditional desktop environments, as well as via SaaS and multi-tenancy cloud deployment environments.
Prior work experience bonuses include direct engineering experience before law school, and any in-house experience at software-intensive enterprises. Helpful post-legal qualification experience includes IP litigation and IP transactional work.
Roles and Responsibilities:
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Responsible for an Intellectual Property docket with an emphasis on new technology development, including risk identification and mitigation for legal compliance during the software development process, including:
- data use and residency
- data privacy laws
- open source software concerns
- artificial intelligence and machine learning governance
- international trade control issues related to software
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Prepares and prosecutes patent applications for patent portfolio, including managing foreign filings
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Drafts and negotiates development agreements, confidentiality agreements, collaboration agreements, and consulting agreements with customers, as well as our vendors
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Provides IP review and analysis through all phases of project development
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Partners with developers to secure invention disclosures
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Conducts intellectual property training, advises management on IP legal issues and Company policies
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Supports IP counsel in enforcement matters involving the technology center
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Interacts and collaborates with IP professionals in other locations
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Monitors and landscapes intellectual property activity in relevant technology areas
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Participates in the Legal Department training and development initiatives
Qualifications and Experience:
- Law degree (JD or equivalent) and member of good standing in at least one state or the District of Columbia Bar
- Registration to practice in patent matters before the USPTO
- University technical degree required, preferably in computer science, electrical engineering, computer engineering, geology, geophysics, applied mathematics, or physics.
- Preference is for a candidate with 4-7 years of experience after law school, working primarily with patent prosecution, patent law, and technology-related agreements and transactions. Substantive litigation experience beyond simple lit support is a well-considered plus.
- Ability to work independently and manage multiple simultaneous projects effectively
- Candidates must be able to legally work and reside in the US without sponsorship
- Experience working for or representing a multinational company preferred
- Previous experience working with oil and gas technology preferred
- Ability to travel internationally on an occasional basis is nearly essential
