IP - Patent Counsel

At UEI you will be part of a world class team that is working to innovate and revolutionize the meaning of ‘wireless control’. Whether it’s via chips, software licenses or turnkey products, we are continuing to reinvent how consumers interact with devices and services in their home.

 

 Each day we make the connected home smarter, easier to connect and use, and more sustainable. We delight our Fortune 100 customers such as Comcast, Apple, Samsung, Google, Vivint and Daikin with ground breaking wireless technology solutions such as advanced, voice-enabled remote controls, cloud control solutions, extreme low power Bluetooth silicon with energy harvesting capabilities, smart thermostats and sensors and many other IoT solutions.

The IP - Patent Counsel manages a global, sophisticated patent portfolio and is responsible for patent drafting, prosecution, and strategic IP work. This role collaborates closely with inventors, engineering, R&D, outside counsel, and business leaders to ensure intellectual property management aligns with product strategy and long-term business objectives. The ideal candidate combines deep technical expertise with strong strategic judgment and is comfortable operating autonomously while serving as a trusted advisor within a collaborative, fast-paced environment.

The duties listed below are intended only as examples of the various types of work that you may be asked to perform. The omission of specific statements of duties does not exclude them from the position if the work is similar, related or a logical assignment to this class.  You may be asked to perform other duties as assigned from time to time.

•Manage day-to-day prosecution of U.S. and international patent applications

•Draft high-quality patent applications and responses to Office Actions with minimal supervision

•Develop filing strategies aligned with business priorities, product roadmaps, and competitive positioning

•Conduct patentability, freedom-to-operate, and competitive landscape analyses inquiries

•Collaborate with product, engineering and business teams on risk assessment and IP strategy

•Participate in invention disclosure reviews, and manage an internal “Patent Committee” to make filing decisions 

•Maintain accurate docketing, reporting, and portfolio metrics

•Support IP litigation matters as needed, including proficiency in drafting initial claim charts against target products

•Support IP due diligence for M&A, partnerships, and licensing initiatives

•Oversee outside counsel and foreign associates

•Managing legal budgets including experience working with finance and accounting teams on budgeting, accrual, and forecast functions 

•N/A

•Registration to practice before the U.S. Patent and Trademark Office (USPTO)

•Juris Doctorate degree

•Bachelor’s degree or higher in a technical discipline (e.g., engineering, computer science, physics, or related field)

•5+ years of patent prosecution experience, with working knowledge of USPTO, and PCT/EP processes and procedures

•Proven ability to manage patent matters independently and exercise sound judgment

•Experience coordinating international patent filings and prosecution

•Experience supporting product-driven or R&D-intensive organizations

•Familiarity with IP issues related to commercialization, licensing, or litigation support

•Business-oriented mindset with strong strategic thinking and attention to detail

•Strong time management, organizational, analytical, communication and interpersonal skills with both technical and non-technical stakeholders

•Ability to balance legal risk, cost, and business value

•Excellent organizational and prioritization skills

•Collaborative, practical, and solution-focused approach

•Flexible and adaptable to a changing environment

•Ability to multi-task and self-manage deadlines with a strong sense of accountability to manage workload

•Experience managing legal budgets in a corporate environment 

•4 days in office, optional Flex Fridays

•Physically able to participate in training sessions, presentations, and meetings.

•Sitting for extended periods of time; Dexterity of hands and fingers to operate a computer keyboard, mouse, etc.