IP Counsel – China

Job Summary:

The intellectual property (IP) practice, within the Legal and Global Affairs (L&GA) Department, is seeking a qualified patent attorney. The IP practice supports all the company’s research and development sites and technical business units. Growth of the company and increasing operations within the People’s Republic of China (PRC) creates a unique opportunity for an in-house legal counsel in a dynamic international environment.

The successful candidate will handle inventions disclosed by the company’s inventors in the PRC. The company’s inventions typically fall within the optical, mechanical, electrical, software, firmware, material processing, metrological, and material science arts.

Primary Duties & Responsibilities:

• Assist employees with submitting invention disclosures and using the company’s IP management system.
• Coordinate with the trade compliance team to identify inventions subject to export control requirements.
• Collaborate with patent review committees and company businesses to determine whether inventions should be protected by patents or maintained as trade secrets.
• Manage the drafting, filing, and prosecution of patent applications for filing exclusively in the PRC.
• Provide instructions to outside counsel during the drafting and prosecution of patent applications.
• Advise PRC company businesses on protecting trade secrets and confidential company information.
• Support L&GA colleagues on mergers, acquisitions, divestitures, contracts, non-disclosure agreements, licensing, and other legal matters as needed.
• Assist in maintaining the “high-technology entity” status for company businesses in the PRC.
• Serve as the primary L&GA point of contact for IP matters in the PRC.
• Travel to company businesses within the PRC, as necessary, to assist with IP matters.
• Conduct IP training and invention harvesting workshops at PRC company sites.
• Assist with maintaining accurate and up-to-date records in the IP management system.
• Draft patent applications for strategically important inventions and for urgent filings, when necessary.
• Review and approve legal invoices for IP matters.
• Ensure compliance with company policies and procedures.
• Provide general administrative support to the IP legal team.
• Perform other duties, as required, according to business priorities.

Education & Experience:

• China National Intellectual Property Administration (CNIPA) registration.
• Bachelor’s or higher degree in physics, engineering, or a related discipline.
• At least two years of experience in preparing and prosecuting patent applications in the optics arts and one or more of the related arts listed above.
• Direct experience or a strong working knowledge in optical technologies, optical communications, photonics devices, lasers, or optical materials is an advantage.
• In-house work experience in an IP role or within a multinational environment is an advantage.
• General legal experience, including employment law and litigation is a strong advantage

Skills & Other Requirements:

• Advanced verbal and written fluency in Mandarin Chinese and English.
• Strong organizational skills and attention to technical and administrative details.
• Excellent communication and interpersonal skills.
• Ability to work effectively in a global cross-functional team.
• Ability to work independently, exercise sound judgment, and complete tasks with minimal supervision.
• Demonstrated aptitude for quickly learning new technologies and technical subject matter.
• High degree of professionalism, integrity, and accountability.