Futurewei Technologies, the US R&D subsidiary of Huawei Technologies Co., Ltd., has a Sr. Patent Counsel position to be staffed out of the US subsidiary’s Plano, Texas or Santa Clara, CA offices. The successful candidate will ideally have 7+ years of in-house and/or private law firm experience with particular emphasis on patent portfolio development and management and outbound patent licensing. Responsibilities for the Patent Counsel position include:
- Provision of comprehensive intellectual property support to US-based research and development clients, including patent review board support, patent portfolio development and management, and claim charting of Futurewei claims against relevant entities.
- Interaction with, and representation of, Huawei IP Licensing personnel in connection with outbound licensing initiatives, including negotiation with identified licensing candidates.
- Supervision and mentoring of junior patent engineering staff from Huawei’s foreign offices as to patent application drafting, prosecution and practice procedures before the US Patent & Trademark Office.
- Rendering of comprehensive intellectual property support to various domestic Futurewei Business Units, including advising as to portfolio development strategies and rendering of legal advice to corresponding US domestic patent review boards.
- Critical review and management of outside counsel engaged in patent procurement activities on behalf of Huawei, as well as attending to oversight and training of patent engineer personnel engaged in preparation and prosecution of U.S. and foreign patent applications.
- Support of Chief Patent Counsel in general intellectual property activities.
- Assist in the development of policies and procedures to optimize Huawei’s US patent portfolio and associated patent practice.
- Registration to practice before the U.S. Patent & Trademark Office
- Outbound licensing experience, including development of licensing strategy, negotiation with adverse parties, and drafting of license agreements
- Strong patent prosecution background, and interest in patent procurement matters
- Possess excellent oral and written communications skills
- Possess excellent patent legal and analytical skills, including demonstrated ability to independently formulate and draft appropriate responses to office actions, and advise clients as to various intellectual property issues
- Candidates must possess a strong technical background in Electrical Engineering, Physics and/or Computer Science; prior experience working within the telecommunications industry desirable
- Ideal candidate must have at least 7 years of experience in patent prosecution, outbound licensing initiatives, or a combination of these practices
- Interest, and ability to work, in multi-cultural environment
- Limited domestic and international travel