Job description
Join Lumina IP Partners, a premier boutique in-house-like IP practice serving world-leading tech companies. We are seeking a seasoned Intellectual Property Counsel to lead patent strategy, manage global portfolios, and collaborate across product, engineering, and business teams to maximize value while protecting innovations.
This role blends deep legal expertise with strategic business acumen in a fast-moving technology landscape, including software, hardware, AI, semiconductors, and consumer electronics. You will influence product roadmaps, counsel executives, and shape the firm’s approach to IP risk, licensing, and competitive positioning.
Responsibility
- Develop and manage patent portfolios across jurisdictions, ensuring alignment with product roadmaps and business goals.
- Draft, file, and prosecute patent applications; perform thorough prior art searches and respond to office actions with persuasive arguments.
- Provide IP risk assessments during product development; advise on freedom-to-operate, design-around strategies, and invention disclosures.
- Lead IP due diligence for partnerships, acquisitions, and licensing opportunities; coordinate with external counsel as needed.
- Negotiate licenses, cross-licenses, and collaborations to maximize value while safeguarding IP assets.
- Collaborate with engineering, product, and business teams to implement IP-friendly development processes and robust documentation practices.
- Manage external patent counsel, budgets, timelines, and quality controls to deliver timely, high-quality work.
Qualification
- Juris Doctor (JD) and active bar admission in California; USPTO registration preferred.
- Minimum 5 years of experience in intellectual property with emphasis on patent prosecution in high-tech environments (software, hardware, AI, semiconductors).
- Proven track record drafting and prosecuting patent applications and managing global IP portfolios.
- Experience in IP due diligence, licensing, and cross-border transactions.
- Strong collaboration, communication, and project management skills; ability to work cross-functionally with product and engineering teams.
- Familiarity with IP analytics tools and prior art search methodologies; proactive in staying current on legal developments and best practices.
- Strategic thinker with business acumen and a pragmatic, solutions-oriented approach to IP challenges.