Senior Patent Counsel

TAE Technologies (pronounced T-A-E) was founded in 1998 to develop commercial fusion power with the cleanest environmental profile, and represents the fastest, most practical, and economically competitive solution to bring abundant energy to the grid. With over 1,800 issued patents, more than $1 billion in private capital, six generations of National Laboratory-scale devices, and an experienced team of over 250+ employees, TAE is now on the cusp of delivering this transformational energy source capable of sustaining the planet for centuries. The company’s revolutionary technologies have produced a robust portfolio of commercial innovations in other large adjacent markets such as power management, energy storage, transmission, electric mobility, life sciences, and more. TAE is based in California and maintains international offices in the UK and Switzerland. Multidisciplinary and mission-driven by nature, TAE is leveraging proprietary science and engineering to create a bright future for us all.

We currently have an opening at our Foothill Ranch, CA (Orange County) facility for a Senior Patent Counsel. The successful candidate’s responsibilities include the strategic capture and management of TAE’s intellectual property, oversight of patent prosecution, and competitive patent landscape analysis pertaining to one or more of TAE’s business units in the fusion, power management, neutron beam, and life science spaces. This is a full-time position with a rich compensation package. Join us!

Working at TAE:

We are a diverse group of 250+ of some of the most brilliant physicists, engineers, and other experts from 30 countries around the world – all committed to improving people’s lives through clean technologies. TAE values individual passion and expertise within our culture of collaboration. We are a proud equal opportunity employer and offer competitive salaries and generous benefits, including paid time off, medical/dental/vision, life insurance, long term disability and accident insurance. 401(k) retirement plans, professional development, community outreach and a spirited intramural ping pong league.

Essential Duties and Responsibilities:

• Develops and implements IP strategies for managing innovation, intellectual property portfolios, and trade secrets for designated technology area(s)
• Leads and organizes efforts to identify inventions and develop invention disclosures; Assists inventors with the writing and submittal of invention disclosures, instructs inventors in legal requirements for a patentable invention and advises on research data needed to support patentability of the inventions
• Critically reviews and evaluates invention disclosures
• Leads, organizes and/or supports patent committee meetings to facilitate portfolio management
• Exercises and maintains authoritative technical knowledge
• Effectively interfaces with and oversees outside law firms
• Initiates and maintains effective communications with researchers, engineers, business leaders and legal colleagues
• Maintains knowledge of patent portfolio and competitors' patenting activities to provide strategic and tactical advice to the business
• Conducts, directs, and evaluates patentability searches and freedom-to-operate analyses

Required Skills:

• 7+ years of experience at a law firm practicing patent prosecution in complex arts, such as electronics, computers, physics, software, or comparable areas
• Demonstrate expertise and sound judgment, understand how assigned responsibilities support our business objectives, and be able to provide practical, risk-balanced advice based upon a thorough understanding of the scope of an issue
• Knowledge of U.S. and foreign patent laws and procedures
• Admitted to practice in the State of California and in good standing
• Admitted before the U.S. Patent & Trademark Office

Preferred Experience:

• Experience in patent litigation, such as outside counsel claim construction, infringement and invalidity contentions, and discovery
• In-house patent counsel experience

Education:

• Bachelor's degree in electrical engineering, physics, or comparable scientific discipline
• Juris Doctor from ABA-approved law school