Job description
NovaLex IP Group, a leading tech-focused intellectual property law practice, is seeking an experienced IP Counsel to lead patent and trademark strategy for a rapidly growing portfolio of clients.
In this role, you will partner with product, engineering, and business stakeholders to protect innovations, manage global filings, and negotiate licensing agreements that align with business objectives.
Responsibility
- Lead patent prosecution strategy for a diverse technology portfolio, including drafting and filing patent applications and coordinating foreign filings.
- Manage trademark clearance, registration, and enforcement across multiple jurisdictions.
- Oversee IP due diligence for mergers, acquisitions, and strategic investments.
- Draft and negotiate IP licenses, joint development agreements, and technology transfer arrangements.
- Conduct freedom-to-operate analyses and monitor competitive IP landscapes to inform product strategy.
- Provide ongoing IP guidance to product, engineering, and business teams on roadmap decisions and regulatory considerations.
- Coordinate with outside counsel and patent agents; supervise junior IP staff and paralegals as needed.
- Support litigation readiness and provide strategic input on disputed IP matters.
Qualification
- Juris Doctor from an ABA-accredited law school and bar admission in Texas (or eligibility to obtain).
- Minimum 5 years of experience in intellectual property law with substantial patent prosecution and trademark experience, ideally in-house and/or at a law firm.
- Strong proficiency in patent prosecution processes, PCT coordination, and foreign filings; familiarity with USPTO, EPO, and JPO procedures.
- Experience across tech sectors such as software, hardware, AI, semiconductors, and related fields.
- Excellent drafting and negotiation skills for licenses, development agreements, and technology transfers.
- Clear communicator with the ability to explain complex IP concepts to non-lawyers and collaborate cross-functionally.
- Demonstrated ability to manage multiple priorities in a fast-paced environment and lead IP initiatives.
- Commitment to ethical practice and high professional standards.