Job description
LuminaTech, a leading innovator in AI-enabled hardware and software solutions, is seeking a Senior Intellectual Property Counsel to protect and grow our global IP portfolio. This role offers strategic influence across product teams, R&D, and business development, with a focus on patent and trademark protection, licensing, and robust IP risk management.
What you’ll do:
- Lead and execute global IP strategy for software, hardware, and AI-driven products across multiple jurisdictions.
- Oversee patent prosecution, claim construction, and freedom-to-operate analyses; supervise external counsel as needed.
- Develop and maintain trademarks, branding clearance, and portfolio management to support product launches and partnerships.
- Negotiate, draft, and manage IP licensing, collaboration, and cross-license agreements with strategic partners.
- Provide risk assessments and legal guidance to product, engineering, and business teams on IP issues throughout the product lifecycle.
- Coordinate IP litigation strategy support, including early case assessment and interaction with outside counsel.
- Champion processes for invention capture, prior art reviews, and internal training on IP best practices.
What you’ll bring:
- Juris Doctor degree and bar admission in good standing; USPTO admission preferred.
- Minimum 5+ years of relevant IP experience, preferably in a technology-focused company or top-tier law firm.
- Strong expertise in patent prosecution (software/hardware and AI-related inventions) and trademark management.
- Proven experience negotiating complex technology licenses and collaboration agreements.
- Excellent analytical, drafting, and negotiation skills with the ability to translate complex technical concepts for business stakeholders.
- Ability to lead cross-functional teams, manage multiple projects, and operate globally with a proactive, business-oriented mindset.
- Strong communication, collaboration, and organizational skills; ability to manage external counsel effectively.
Responsibility
- Develop and execute a comprehensive IP strategy that aligns with product roadmaps and corporate objectives.
- Manage the lifecycle of patent and trademark portfolios, including filings, office actions, continuations, and maintenance.
- Counsel teams on IP risk, FTO, and freedom-to-operate analyses for new technologies and market expansions.
- Negotiate licenses, joint development agreements, and strategic partnerships to maximize value and reduce risk.
- Collaborate with product, engineering, regulatory, and business development teams to integrate IP considerations into product design and go-to-market plans.
- Supervise external counsel on patent prosecution, litigation support, and IP transactions as needed.
- Establish training programs and internal processes to improve invention capture, prior art reviews, and IP awareness across the organization.
- Monitor IP landscape and competitive activity to inform strategic decisions and competitive positioning.
Qualification
- Juris Doctor degree and active bar admission in the United States; USPTO registration preferred.
- 5+ years of IP experience in technology, software, or AI-focused environments.
- Proven track record in patent prosecution, including drafting and prosecuting software/hardware and AI-related patents.
- Demonstrated success in trademark clearance, procurement, and portfolio management.
- Experience negotiating and drafting complex IP licenses and collaboration agreements.
- Strong analytical and communication skills with the ability to explain technical concepts to non-technical stakeholders.
- Ability to work cross-functionally in a fast-paced, global organization and manage external counsel effectively.
- Detail-orientated, proactive, and able to handle multiple high-priority projects simultaneously.