Senior Intellectual Property Counsel

New York
May 01, 2023
May 29, 2023
Contract Type

Job Summary: The Senior Intellectual Property (IP) Counsel will join Prove's Legal & Compliance Department to oversee and scale Prove's IP strategy, framework, and program. This will involve working closely with our Legal, Product, and Engineering teams to maintain Prove's growing IP portfolio and identify IP–related opportunities (e.g., manage existing IP assets, develop prosecution strategies, conduct product reviews, file new registrations). The ideal candidate is a licensed attorney in New York, or has ability to obtain in–house corporate counsel registration, and a member in good standing of the US patent bar.

Key Responsibilities:

  • Establish and scale Prove's global IP strategy, framework, program, and processes.
  • Oversee and manage all aspects of Prove's global patent portfolio, including global prosecution, associated payments (new and existing patents), and the identification of a patent strategy for an expanding portfolio to maximize exclusivity.
  • Oversee and manage Prove trademark registrations and management globally, including Trademark Trial & Appeal Board (TTAB) matters, and with the assistance of outside IP counsel (where needed).
  • Partner with Prove's Commercial Contracts team to draft, negotiate, and drive IP–related agreements or provisions.
  • Partner with Prove's Product team to review current and emerging products to identify new IP opportunities and determinate IP prosecution strategy, including which international geographies to focus on.
  • Distill complex IP concepts to legal and non–legal colleagues, including Prove's Executive Team during IP strategy presentations and updates.
  • Draft external IP filings such as new patent and trademark filings, Information Disclosure Statements, etc.
  • Manage internal IP materials and resources, including filing and fee schedules.
  • Judiciously outsource IP–related matters and issues to external IP firms and supervise their work product to ensure high quality and cost–effective support.

What You Will Bring:

  • 5+ years of patent experience at a law firm and/or in–house at a technology company, including managing large, diversified patent and trademark portfolios.
  • 5+ years of experience in trademark portfolio management and prosecution, including search opinions, trademark prosecution.
  • Confidence in providing complex legal opinions and risk analysis on IP–related matters.
  • Experience negotiating IP related agreements or agreements with IP related provisions.
  • Promote, maintain and enhance our cultural values of humility, passion, inclusion, and leadership.
  • Strong passion for learning about our products and markets through in–house and external training.
  • Experience in high–growth /pre–IPO Technology companies preferred, but not required.

This position description should not be considered the final description of the position. The position description is not intended to be an all–inclusive list of duties and standards of the positions. It should be assumed that we would, to some extent, structure responsibilities in accordance with the successful candidate's capabilities and changing business conditions. Incumbents will follow any other instructions, and perform any other related duties, as assigned by their supervisor.

The anticipated salary range for this role is $170,000– $210,000 plus variable company bonus. Offered salary will be determined by the applicant's education, experience, knowledge, skills, geo–location and abilities, as well as internal equity and alignment with market data.

Benefits & Perks for FTE Provers:

  • Competitive salaries & Bonus Plan (for eligible roles) and Equity Plan
  • 401(k) Retirement Plan & Match
  • Comprehensive medical benefits for you and your family ???
  • Emotional & Physical Wellness – Access to wellness services (EAP, Gympass, Prove Well–Being Reimbursement)
  • Unlimited Vacation and Flexible hours
  • Professional Development Coaching via Bravely
  • Healthy lunches catered and bottomless snacks & beverages for all office locations.
  • 12 paid holidays for all global employees