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Patent Counsel

Posted Jul 16
Full Time
San Francisco, Francisco

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Job Category

Legal

Job Details

Salesforce is looking for a key player to join its Intellectual Property Team in San Francisco and to creatively handle the IP issues that rain from the cloud. The ideal candidate will have three to five years of IP legal experience focused on patents and will have the following skills:

  • Patent Prosecution
  • Patent Litigation and/or Litigation Support
  • Strong Technical Background
  • Superior Analytical Skills


Pluses:

  • Patent and Technology Licensing
  • Open Source
  • Project Management
  • Copyright (both Software and Content)
  • Trademarks
  • Confidentiality
  • Investigations


Salesforce has been rated as one of the top three most innovative companies by Forbes for seven straight years. The successful candidate’s duties will include managing a significant portion of our patent portfolio to ensure that we protect our developers’ innovations. While we don’t do in-house prosecution, we actively engage in harvesting and shaping our patent portfolio to provide strategic value to the company. At the same time, the successful candidate will be actively involved in patent analysis for handling patent assertions and responding with appropriate counter-assertions. Additional duties will include helping with open source initiatives, participating in patent licensing, and consulting with our Commercial and Product teams on technology licensing and indemnification issues.

The successful candidate will have the ability to team well with others and thrive in a chaotic but fun work environment. Creativity in finding solutions that fit our Salesforce culture to achieve customer success is highly valued. Excellent verbal and written communication skills along with the ability to work independently while demonstrating sound business and legal judgment are key to success in this job. Patent bar admission and familiarity with key cloud technologies and the legal issues that arise from the use of those technologies are considered a plus but are not requirements.

Responsibilities:

  • Manage prosecution and use of patents relating to the company's Web-based, on-demand application service technologies; maintain technical understanding of the company's research and development initiatives; help develop and implement the company's overall patent strategy; help implement the company's open source initiatives; analyze adversely held patents; investigate and resolve confidentiality matters; and supervise outside patent counsel.
  • Opportunities depending upon experience to assist Senior Counsel with trademark, false advertising and unfair competition claims; patent acquisitions; inbound and outbound software, application service and intellectual property license agreements with vendors, partners and customers.

Desired Skills/Experience:

  • Undergraduate degree in technical major such as electrical engineering or computer science or relevant technical experience required
  • Law degree from ABA accredited law school required for attorney applicants
  • Admission to practice before the US Patent and Trademark Office preferred but not required for the right candidate. Attorney applicants should be admitted to at least one state bar (California preferred)
  • 3+ years of relevant experience, preferably with a combination of patent prosecution and litigation experience
  • Familiarity with software development and copyright law as it applies to software development and distribution
  • Significant experience in preparing and prosecuting patent applications relating to software and Internet technologies; familiarity with database concepts and Java, XML, Web services, security, web apps, user interfaces, API’s, big data and analytics, and other Internet technologies is required.
  • Experience analyzing, drafting and prosecuting trademark applications is beneficial. Transactional experience is also beneficial.
  • Familiarity with a variety of portfolio management tools
  • Familiarity with international patent prosecution and litigation
  • Familiarity with common issues for IP and standard setting
  • Patent Litigation or Patent Litigation Support
  • Teaming

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