Careers

IP Counsel

Albany, New York
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About Us

Menlo Micro has reinvented one of the most fundamental building blocks of electronic systems – the electronic switch. Menlo Micro’s technology creates a new switch category that eliminates compromises and tradeoffs by combining the benefits of electromechanical and solid-state switches into the best of both worlds with its “Ideal Switch.”

Are you interested in playing a critical, impactful role and work with top electronic systems talent at an exciting startup backed by industry leaders? Do you want to help create truly disruptive and unique products that have the ability to change markets? If you answered yes to both, this may be your opportunity to have a significant impact at a cutting-edge startup with industry-leading technology that will drive electronic systems innovation across a diverse range of industries.

Role Summary and Purpose

You will be an integral member of a young semiconductor device technology company that is inventing, building and taking to market a new class of RF and power electronic technology (the Ideal Switch). In this role you will report to the Chief Technology Officer and be responsible for the maintenance and growth of the company’s IP portfolio as well as its strategy for maintaining its leading IP position.

Responsibilities

This position is responsible for setting the company’s IP policies, improving internal IP practices, executing the companies IP priorities and growing the company's IP portfolio. You will work with the Technology and other company teams to identify novel IP for disclosure and drive the review, application drafting, and patent prosecution practices. You will work closely with outside patent counsel for patent application drafting and filing. In addition you will work with company leadership on IP Landscape, Foreign Filing Strategy, Freedom to Operate Assessments, Product Clearance and IP License Agreements as part of maintaining and advancing the companies IP security and industry position.

You will:

  • Lead the companies process of Identifying, Selecting and Drafting new patent applications
  • Work with outside counsel on US and foreign patent application drafting and prosecution
  • Work with leadership to define, update and maintain foreign filing strategy
  • Drive the companies IP landscape, Freedom to Operate and Product Clearance processes
  • Draft Freedom to Operate opinions and Product clearance documents
  • Drive the companies disclosure drafting and submission process
  • Build out the companies IP by working with the technologies on gap analysis and generation sessions
  • Draft and negotiate NDA and license agreements as well advise on IP terms in other commercial agreements
  • Be responsible for the companies NDA policies, practices and legal review.
  • Comply with all company quality and safety policies and procedures
  • Be responsible for the companies NDA policies, practices and legal review.
  • Comply with all company quality and safety policies and procedures

Qualifications/Requirements

  • BS, MS or PhD in STEM related disciplines (Science, Technology, Engineering, Math)
  • JD in Intellectual property law
  • Licensed to practice before the USPTO
  • Minimum 5 years as an IP attorney
  • Demonstrated experience in the preparation and prosecution of patent applications
  • Experience in semiconductor and/or power electronics device and or systems
  • Experience establishing and maintaining processes for IP Landscaping, Product clearance and Freedom to operate
  • Ability to work in a multi-disciplinary team environment
  • Excellent communication skills
  • Legal authorization to work in the U.S. is required
  • Work office located in Albany, NY

Desired Characteristics

  • Good organization skills with the ability to handle multiple tasks, manage outside IP counsel and set priorities to meet goals in a fast-paced environment
  • Demonstrated ability to be a successful influencer
  • Excellent verbal and written communication skills; experience communicating complex legal opinions to a highly technical team
  • A desire to be a critical problem solver and innovator
  • Awareness of MEMS technology
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