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NetApp is looking for an experienced and strategic IP attorney to join its award-winning legal department. The successful candidate will manage, implement, and support NetApp’s patent portfolio and litigation functions. You will be responsible for building a strategic patent portfolio, advising on related IP matters, and managing patent litigation as the company develops its next generation technology in enterprise and cloud-based data storage, management, and services. You will oversee and manage all aspects of our patent portfolio. You will play a critical role in protecting and maximizing the value of NetApp's patent assets and providing strategic guidance on IP-related matters. This is a leadership position that requires strong legal expertise, business acumen, and the ability to collaborate effectively with cross-functional teams.
Job Responsibility:
Partner closely with engineering and product teams to identify and harvest strategic inventions
Oversee the patent portfolio, including conducting patentability assessments, drafting and prosecuting patent applications, and managing relationships with outside counsel, with strong software patentability experience
Manage outside counsel in the filing of new patent applications before the USPTO and other patent agencies internationally in prosecuting active cases
Manage patent litigation in US District Courts, ITC, and IPRs
Work closely with the "Innovation Capture Committee," including senior NetApp executives, to manage and strategize the patent portfolio
Collaborate with engineering and product marketing teams to align patent policy with company direction (e.g., cloud or hybrid technologies)
Identify existing and future projected competitors and assist the IP group to develop mitigation strategies (e.g., patent acquisition, cross licenses, etc.)
Identifying and managing defensive publication opportunities
Manage outside counsel for filing and prosecuting patent applications in the US and internationally
Manage the entire patent lifecycle, including identifying, protecting, and enforcing NetApp's patent assets
Ensure compliance with patent laws, regulations, and best practices in multiple jurisdictions. Patent due diligence for mergers, acquisitions, and partnerships, providing strategic guidance and risk assessment
Advise internal stakeholders on patent-related matters, including licensing, validity, infringement, and litigation
Stay updated on emerging IP trends, changes in laws especially in patent eligibility, and competitive landscape to provide proactive guidance and recommendations
Requirements:
At least 10 years’ experience in intellectual property law, including IP litigation, IPR, drafting and prosecuting patent applications in hardware and software technologies in the US and other countries, and management experience
Strong background in SaaS and in software patenting in the US and internationally
Strong personal communication skills, both written and oral
Strong work ethics and self-starter, with a growth mindset, in a fast-paced environment
Strategic thinker but can also be detail oriented
Flexibility in working hours in a global enterprise
Ability to travel domestically and internationally to visit R&D sites required
Ability to thrive in a high performance and fast-paced environment
Ability to prioritize effectively and execute quickly with excellent judgment
Solution-oriented and excellent problem-solving skills