Patent Attorney

Job Title

: IP/Patent Attorney

Job Location

: Santa Clara, CA or Remote

Exo Imaging is revolutionizing the ultrasound industry – packing high end imaging into a handheld.

If you possess a deep knowledge of the patent field, passion for innovation, and have a technical background in MEMS, semiconductor, handheld systems, and software, we would like to speak with you. At Exo, you will craft bold strategies for the core IP, while growing new IP. Take on new markets and defend the team from competitors in a rich legal tapestry.

Responsibilities:

- Manage, curate, and grow Exo’s diverse IP portfolio, across all products.

- Craft a purposeful and effective IP strategy that is equal parts blocking and aggressive.

- Encourage and identify high-value strategic patentable inventions, guiding the ideas through the patent process.

- Assign and manage work performed by outside law firms.

- Support all patent, trademark, and licensing transactions.

- Work cross-functionally with Engineering, Finance, Marketing, and Operations to support due diligence, licensing, standards, enforcement, and litigation.

- Monitor and analyzes competitive intellectual property and communicate findings to R&D project teams and management.

- Anticipate future IP-related challenges and risks to the company and innovate to find solutions and mitigation strategies across product portfolio.

- Provide guidance and oversight to inventors for drafting invention disclosures and developing experimental protocols to support patents.

- Perform patentability and freedom to operate searches.

- Assist the leadership team in managing contentious patent and trademark matters.

- Develop, implement and ensure compliance with policies and procedures relating to IP protection requirements and ensure IP processes are consistent with best practices.

- Contract management: draft, review, negotiate and manage a broad range of contracts including NDAs, MSAs, BAA, software licenses, and data agreements.

- Aware of, competent, able to research and advise on employment law matters

Skills, Education and Experience

- Registered to practice before the U.S. Patent and Trademark Office.

- Member of the State Bar of California.

- 10 years of experience drafting and prosecuting patent applications, managing portfolios, developing patent strategies, conducting patent analysis, and supporting IP transactions and litigation efforts.

- Experienced in MEMS, semiconductor, ultrasound, handheld systems, and related fields.

- Familiar with software and algorithms, including AI and ML.

- Working knowledge of US and international laws, regulations, and procedures relating to technology/ ultrasound technology IP.

- Experience running complex freedom to operate searches.

- Experience managing patent litigation and/or challenging/defending patents in proceedings before the USPTO or the EPO an asset.

- Experience developing and managing trademark portfolios.

- Experience with contract management on a variety of business and commercial agreements

- Exceptional oral and written communication skills, the ability to explain complex IP issues tostakeholders from various professions and the ability to present findings with confidence to senior management.

- Proven interpersonal skills with the ability to work collaboratively as a member of cross- functional team and ability to establish and maintain effective working relationships.

- Strong organizational skills and the ability to work effectively in a fast-changing environment.

- Strong analytical and problem-solving abilities with attention to detail.

- Demonstrated high level of integrity and ethics.

- Proficiency with MS Office and other technologies