Intellectual Property Counsel Jobs

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• March 22, 2023
• Checkerspot

Title: Intellectual Property Counsel

Type: Full-Time

Location: Alameda, CA, Salt Lake City, UT or Remote within the U.S.

Supervisor: Head of Legal Affairs and Strategy

PRINCIPAL RESPONSIBILITIES

Checkerspot’s lifeline in sustainability and success is measured in the health of our partnerships and customer base. Checkerspot is a design-centric, high-performance materials company. Advances in our understanding of biology, chemistry, and materials science are aligning with advances in computational, experimental and fabrication tools, unleashing capabilities we once only imagined. By engaging directly with product users and partnering with socially responsible corporations, we design and bring to market superior products with better materials to meet real needs. We believe in open-minded innovation from concept to consumer, listening to impassioned pioneers every step of the way. We seek an enthusiastic, team oriented problem solver to join our team who has an entrepreneurial mindset, passion for new technology, and the drive to build a sustainable business. The principal responsibility of this role is to provide legal advice and support to Checkerspot team members on intellectual property matters with an eye towards aligning long-terms goals of the company and legal department while managing tactical and day-to-day requirements of internal and external stakeholders in time-sensitive situations and a fastpaced environment. The role will report to the Head of Legal Affairs and Strategy. This is a truly unique opportunity to have major impact at an exciting, rapidly growing, entrepreneurial company building tools for a postpetroleum future.

KEY RESPONSIBILITIES

• Work with outside counsel and internal stakeholders to drive and produce effective U. S. and foreign patent strategies to protect Checkerspot’s platform and product technologies with a focus on alignment of the patent portfolio with Checkerspot’s business needs, priorities and resources.
• Oversee the development and implementation of processes, procedures, and systems to support needs of business development, sales, and technology teams and improve Checkerspot’s ability to effectively manage customer and partner relationships and contracts.
• Advise and educate team members regarding IP-related issues, risks, and mitigation strategies.
• Provide patentability, freedom-to-operate, landscape, and competitor analyses.
• Direct, review, and manage the work product of outside counsel.
• Interact with the technology and business teams in Alameda and Salt Lake City at all levels, including group leaders and team members, to drive IP engagement, identify patent-worthy inventions, and secure patents on Checkerspot innovations.
• Draft/review a wide variety of work product, including patent applications and office action responses, and manage/provide hands-on direction and input to outside counsel in the prosecution of patent applications.
• Work with other members of the legal team to provide support for IP provisions in material transfer, research collaboration, and other agreements as needed.
• Influence and execute Checkerspot’s strategy to protect its core intellectual property assets relating to its molecular foundry, chemistry, materials science, and fabrication capabilities.

KEY REQUIREMENTS

• Advanced degree (preferably a Ph.D.) in biochemistry, molecular biology, or chemistry; a strong technological aptitude for learning and working with a range of technologies; and a willingness to learn and engage with Checkerspot employees and outside counsel in other technology areas.
• Ability to manage multiple projects that may have conflicting timelines
• Excellent writing, communication, organizational, problem-solving, and analytical skills.
• Strong interpersonal skills and ability to strategically educate and support fellow employees and work in cross-functional teams.
• Solid work ethic, uncompromising integrity, attention to detail, enthusiasm, and a sense of humor
• Registration to practice before the U.S. Patent and Trademark Office in good standing
• Self-directed and proactive, comfortable executing on multiple projects independently and in collaboration with others.
• At least 7 years of patent prosecution/intellectual property experience, with strong preference for both law firm and in-house experience
• Comfortable working in a fast-paced, dynamic environment
• Ability to tackle and solve challenging scalability issues that require resourcefulness, creative thinking, and collaboration
• Juris Doctorate (JD) degree from an ABA accredited law school and license to practice law in at least one state in good standing
• Demonstrated ability to provide critical and clear advice on patent law and intellectual property business risks to internal client groups.
• Solid knowledge of global intellectual property laws & practices.

At Checkerspot, base pay is one part of our total compensation package and is determined within a range. This provides the opportunity to progress as you grow and develop within a role. The base pay range for this role is between $160,000 – $210,000 and your base pay will depend on your skills, qualifications, experience, and location.

BENEFITS

Checkerspot offers its employees a competitive benefits and compensation package. Checkerspot is an Affirmative Action and Equal Opportunity Employer and all qualified applicants will receive consideration for employment without regard to race, color, religion, gender, sexual orientation, national origin, genetic information, age, disability, veteran status, or any other legally protected basis.